Booking.com B.V. v. United States Patent and Trademark Office, 915 F.3d 171 (4th Cir. 2019), cert. granted, 2019 WL 5850636 (Nov. 8, 2019)
Since at least 2006, Booking.com B.V. (“Booking”), a Dutch company, has operated a website where its customers can book travel and hotel accommodations. In 2011 and 2012, Booking filed four trademark applications with the USPTO (“PTO”) seeking to register BOOKING.COM as a standard character mark and in three stylized iterations of it.
The assigned examiner and, on appeal, the Trademark Trial and Appeal Board (“TTAB”) took a dim view of the idea. Both determined that the mark’s terms were either wholly generic and, as such, unregistrable under all circumstances, or descriptive and registrable only with proof that the mark had acquired secondary meaning (“acquired distinctiveness”). As the Fourth Circuit’s panel later noted, secondary meaning requires a showing “that a term has become sufficiently distinctive to establish a mental association in the relevant public’s minds between the proposed mark and the source of the product or service.” Booking.com B.V. v. United States Patent and Trademark Office, 915 F.3d 171, 177 (4th Cir. 2019). In the views of both the examiner and the TTAB, however, Booking had failed to meet its burden of proof on acquired distinctiveness.
In what must have been motivated by a desire to fortify the evidentiary record as to secondary meaning, and with de novo review providing additional enticement, Booking opted to challenge the TTAB’s rulings in a civil action in the United States District Court for the Eastern District of Virginia under 15 U.S.C. §1071(b)(3) (permitting parties to challenge PTO and TTAB rulings in a civil action “without prejudice to the right of any party to take further testimony”). Once there, Booking argued that its proposed mark was either descriptive or suggestive—but not generic—and, under either classification, it was protectable. In support of its claim to acquired distinctiveness as a descriptive mark, Booking offered new evidence, including a Teflon survey reporting that “74.8% of respondents identified BOOKING.COM as a brand name.” Booking.com B.V. v. Matal, 278 F. Supp. 3d 891, 915 (E.D. Va. 2017). For its part, the PTO insisted that since both elements of the mark are generic when used separately, they cannot have “source identifying significance” when combined. Id. at 906. Alternatively, the PTO pressed the argument that Booking failed to prove acquired distinctiveness. In the end, the district court was persuaded by Booking’s arguments. It held that, as to two of the proposed marks, BOOKING.COM was not generic, was instead descriptive, and, based on the evidence presented, had acquired distinctiveness in hotel reservation services, although not in travel agency services. Id. at 923.
On appeal to the Fourth Circuit, the shape of the case changed to a degree when the PTO “concede[d] that if BOOKING.COM may properly be deemed descriptive, the district court’s finding that it ha[d] acquired secondary meaning was warranted.” Booking.com B.V., 915 F.3d at 179. With this concession, the PTO rested its appeal on the view that the mark is generic, susceptible of no other classification, and unprotectable on any basis. But the PTO appears to have done little to meet its related burden to show that the “primary significance of the mark to the relevant public is as an indication of the nature of the class of the product or services to which the mark relates,” Id. at 180, or to contradict Booking’s showing that the mark had become “an indication of [its] source or brand.” Id.
Two members of the Fourth Circuit’s panel affirmed the district court’s finding that BOOKING.COM is a descriptive, non-generic mark.” Id. at 184. In doing so, the majority rejected the PTO’s reliance on the Supreme Court’s 1888 decision in Goodyear’s India Rubber Mfg. Co. v. Goodyear Rubber Co., 128 U.S. 598, 602-603 (1888), holding that the addition of commercial indicators such as ‘Company’ to terms that merely describe classes of goods is not enough to warrant registration. As the majority noted,
Goodyear was decided almost sixty years before the Lanham Act and, crucially, did not apply the primary significance test. No circuit has adopted the bright line rule for which the USPTO advocates—indeed sister circuits have found that when ‘.com’ is added to a generic TLD [sic], the mark may be protectable upon a sufficient showing of the public’s understanding through consumer surveys or other evidence.
Booking.com B.V., 915 F.3d at 184 (citations omitted).
The majority found equally unpersuasive the PTO’s argument that “the proposed mark is per se generic because it is nothing more than the sum of its component parts.” Id. Rather, the court explained, “[W]hen ‘.com’ is combined with an SLD, even a generic SLD, the resulting composite may be non-generic where evidence demonstrates that the mark’s primary significance to the public as a whole is the source, not the product.” Id. at 186.
Circuit Judge Wynn filed a dissenting opinion, Id. at 188-197, in which he determined that the central error of the district court was to conclude that, “as a matter of law, ‘the combination of a generic [Secondary Level Domain] and a [Top Level Domain]’ is presumptively descriptive and protectable upon a showing of acquired distinctiveness.” Id. at 190 (emphasis and bracketed phrases in original, citation omitted). While Judge Wynn did not rule out that there could be occasions where “adding a generic Secondary Level Domain to a Top Level Domain does not create a generic mark,” those, he suggested, would be rare occasions.* Id. at 192-193 (“Because Top Level Domains generally convey only that a business is web-based, it is only in rare circumstances that the combination of a generic Secondary Level Domain, on its own incapable of source identification, and “.com” will produce a composite mark that expands the meaning of the mark.”) (internal quotation marks and citations omitted). Here, Judge Wynn referred to “the possibility of a brick-and-mortar company that sold tennis equipment and operated under the name “tennis.net.” Id. at 192. This “witty double entendre related to tennis nets” would, in Judge Wynn’s view, distinguish such a mark from one merely combining a generic, second-level domain with a top-level domain, but offering nothing more. Id.
Judge Wynn then addressed the policy considerations behind the prohibition against protecting generic marks:
Fundamentally, the proscription against allowing generic terms to be trademarked stems from considerations regarding the monopolization of language. To permit generic terms to be trademarked “would grant the owner of the mark a monopoly, since a competitor could not describe his goods as what they are.” CES Publ’g Corp. v. St. Regis Publ’ns, Inc., 531 F.2d 11, 13 (2d Cir. 1975). This Court has long sought to foreclose such a result, holding that no single competitor has the right to “corner the market” on ordinary words and phrases, thereby enclosing the “public linguistic commons.”
Id. at 193 (citations omitted). For Judge Wynn, the prohibition against trademarking generic terms knows no exception:
Importantly, the law forbids trademarking generic terms, even when a putative mark holder engages in successful efforts to establish consumer recognition of an otherwise generic term. “[N]o matter how much money and effort the user of a generic term has poured into promoting the sale of its merchandise and what success it has achieved in securing public identification, it cannot deprive competing manufacturers of the product of the right to call an article by its name.” Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir. 1976). Therefore, even advertising, repeated use, and consumer association will not warrant affording trademark protection to a generic term. See Am. Online, 243 F.3d at 821 (“[T]he repeated use of ordinary words … cannot give [a single company] a proprietary right over those words, even if an association develops between the words and [that company].”); see also Surgicenters of Am., Inc. v. Med. Dental Surgeries, Co., 601 F.2d 1011, 1017 (9th Cir. 1979) (finding that even if a generic term becomes identified with a first user, trademark protection will not be available in the generic term).
Id. at 194.
On November 8, 2019, the Supreme Court granted certiorari to consider a single question in the case:
Under the Lanham Act, 15 U.S.C. 1051 et seq., generic terms may not be registered as trademarks. The question presented is as follows:
Whether the addition by an online business of a generic top-level domain (“.com”) to an otherwise generic term can create a protectable trademark.
Patent and Trademark Office v. Booking.com B.V., No. 19-46, 2019 WL 5850636, at *1 (U.S. Nov. 8, 2019). Briefs have been filed, including those of several amici, and the case is scheduled for argument on March 23, 2020.
-Anthony F. Muri, March 12, 2020
Postscript: On March 16, 2020, due to concerns relating to COVID-19, the Supreme Court postponed indefinitely all oral arguments scheduled for the period March 23 through April 1, 2020. Argument was rescheduled to Monday, May 4, 2020.
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* A top-level domain (TLD) refers to the suffix or extension attached to an internet domain name in the “root space.” Examples are .com, .edu, and .gov. A second-level domain (SLD) is the portion of the domain name that identifies the administrative owner of the site. In the case discussed here, the SLD is “Booking” while the TLD is “.com.”