United States Patent and Trademark Office v. Booking.com B.V.

PROTECTION FOR “GENERIC.COM” TRADEMARKS

The USPTO argues that after the decision in Goodyear’s India Rubber Glove Manufacturing Co. v. Goodyear Rubber Co., the addition of words such as “Company” or “Inc.” to a generic word does not render the compiled word non-generic as the addition only implies that parties had formed a business entity dealing in the specific goods or services that the generic term connoted. Brief for the Petitioners, United States Patent and Trademark Office at 18–19. The USPTO explains that Goodyear’s reasoning is derived from a basic principle of trademark law that trademarking generic terms will harm competitors engaged in similar businesses and will prevent them from using similar designations. Id. at 19. The USPTO contends that domain names like “.com” are covered under the Goodyear rationale because the term only implies that the organization has an online presence to deal in the relevant goods or services. Id. at 20. The USPTO also argues that Goodyear continues to apply even though it predates the Lanham Act (“Act”) because the Act codified common law principles of trademark protection including Goodyear. Id. at 21. The USPTO relies on several decisions of the TTAB and courts of appeals which have considered the analogy between “Generic Inc.” and “generic.com,” and have concluded that a “generic.com” domain is not a protectable trademark. Id. at 22. The USPTO takes the position that if the respondent cannot trademark “Booking Company” or “Booking Inc.,” it should not be permitted to register “BOOKING.COM” as a trademark either. Id. at 25.

Booking.com counters that the Lanham Act superseded Goodyear. Brief for the Respondent, Booking.com B.V. at 37–38. Booking.com explains that in Goodyear, the Court uses the terms generic and descriptive marks interchangeably and that in fact pre-Lanham Act cases treat Goodyear as barring trademark protection for descriptive terms and not as dealing specifically with generic marks. Id. at 37. Booking.com highlights provisions in the Lanham Act that now permit descriptive marks to be registered as trademarks. Id. at 39. Booking.com adds that the standard under the Act has shifted to a mark’s ability to differentiate a party’s products from others’ products. Id. Booking.com highlights the USPTO’s registration of trademarks such as “Cotton Emporium,” “Cotton Collection,” and “Margarita Company” to argue that even the government’s understanding of the Act is that consumer recognition determines whether a mark is protectable. Id. Booking.com argues that even if Goodyear continues to be good law, its rationale does not extend to domain names like “.com” because these suffixes differ from corporate designations in important ways. Id. at 43.

USING CONSUMER SURVEYS TO ESTABLISH SECONDARY MEANING OF A GENERIC TRADEMARK

The USPTO argues that Booking.com’s survey that was offered to prove that consumers perceived the name as a brand name rather than as a general reference to booking services, does not offer a basis for trademark registration. Brief for Petitioners at 36. The USPTO asserts that the survey is not relevant under Goodyear as trademark policy is not based on how long a producer has used the name and how much goodwill it has accrued. Id. The USPTO then acknowledges the primary significance test which focuses the inquiry on whether the consuming public views the term as signifying the producer rather than the product but argues that this test only governs cancellation of an existing trademark. Id. at 37. The USPTO contends that the “primary significance” test does not replace Goodyear’s ruling that “Generic Company” or “Generic Inc.” terms are not protectable trademarks as a matter of law because such protection to generic marks would frustrate competitors’ capacity to promote their own goods or services. Id. at 38. The USPTO emphasizes that survey evidence could not transform an unprotectable, generic mark into a protectable trademark and doing so would conflate generic marks with descriptive marks. Id. at 40. The USPTO explains that generic terms do not qualify for trademark protection regardless of secondary meaning while descriptive terms may qualify for trademark protection upon a showing of secondary meaning. Id. at 41.

Booking.com counters that the Lanham Act does not prevent registration of “generic.com” trademarks if the “primary significance” of the mark to consumers is the producer rather than the category of goods and services the term connotes. Brief for Respondents at 18–19. Booking.com argues that the “primary significance” test applies to both initial registration and cancellation of trademarks, and is the appropriate test to determine the genericness of a mark. Id. at 20. Booking.com contends that courts and the USPTO have consistently applied this test to both original registration and cancellation. Id. at 21. Further, according to USPTO, as the “primary significance” test considers how consumers perceive a mark, it is more consistent with the Lanham Act’s goals of rewarding trademark owners who build goodwill in the market. Id. at 24. Booking.com also argues that survey evidence may properly be used under the “primary significance” test because evaluating genericness of any mark is a factual issue that depends on evidence of what consumers actually think. Id. at 30. Booking.com argues that USPTO miscategorized all “generic.com” marks as fundamentally generic regardless of how consumers recognize these marks. Id. at 31. Lastly, Booking.com argues that BOOKING.COM is a descriptive mark, not a generic one, because of the results of the consumer survey and as such should be registered because “BOOKING.COM” has acquired a distinctive meaning. Id. at 34.