The US Supreme Court has held that the mark BOOKING.COM should not be barred from protection merely because it comprises a “generic word plus .com”. It found the mark inherently capable of registration, overturning a longstanding policy applied by the USPTO which stated that the combination of a generic term with the .com suffix would not create a protectable mark. This is a significant win for Booking.com and of value to other brand-owners with similar domain-led brands.
The long-running US case of US Patent and Trademark Office v Booking.com BV made US history in May 2020, being the first US Supreme Court hearing to be conducted remotely and live-streamed globally.
The Supreme Court’s decision, handed down on 30 June 2020, once more promises to make headlines with news that will be greeted enthusiastically by rightsholders that use domain names as their primary brand.
The case relates to the USPTO’s objection to the registration of a word mark for BOOKING.COM for, amongst others, hotel reservation services on the basis that such mark would be descriptive. This was part of a longstanding USPTO policy that determined that the combination of generic term with the .com suffix would not create a protectable mark.
The US Supreme Court has ruled that, notwithstanding the fact that the word BOOKING alone would not be registrable, the generic word BOOKING in combination with the generic top-level domain “.com” could be capable of trade mark protection. The court held that in cases like this, one needs to assess how consumers will perceive the mark as a whole and, as supported by survey evidence from Booking.com BV, in this case consumers did not perceive the mark as a generic term. The court stated:
“[W]hether “Booking.com” is generic turns on whether the term, taken as a whole, signifies to consumers the class of hotel reservations services. … Consumers do not in fact perceive the term “Booking.com” that way, the courts below determined. … That should resolve the case: because “Booking.com” is not a generic name to consumers, it is not generic.”
This US approach is similar to the UK and EU approach: taken alone, the gTLD element like “.com” or “.uk” will be non-distinctive. A domain name, taken as a whole, can, in principle, be distinctive, albeit it is harder for more generic words.
It remains to be seen whether the Booking.com decision will lead to an increase in US trade mark applications by companies operating under a [GENERIC WORD].COM brand name. The decision also leaves some ambiguity over the evidence required to show that a mark is not generic. Justice Sonia Sotomayor stated that consumer surveys (while relevant in this case) may be unreliable proof of whether a mark is generic and the Court’s opinion should not be read to suggest “that surveys are the be-all and end-all”.
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