US SC ALLOWS GENERIC TERM –BOOKING.COM TRADEMARK REGISTRATION

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That as per the  Lanham Act generic terms cannot be registered as trademarks. 15 U.S.C. § 1051 et seq. But can an online business create a protectable trademark by adding a generic top-level domain—like “.com”—to an otherwise generic term? That’s the question was answered in the affirmative by the US Supreme on 30-6-2020 in the case of  U.S. Patent & Trademark Office v. Booking.com B.V., No. 19-46. The Court granted the USPTO’s petition for writ of certiorari on November 8 and  decided the case in this term.

FACTS

In 2011 and 2012, Booking.com, a travel and hotel accommodations company, filed four trademark applications for BOOKING.COM. The company sought to register both the word mark and stylized versions of the mark. Finding the marks generic and therefore unprotectable, a USPTO (United States Patent and Trademark Office) examiner rejected these applications. Alternatively, the USPTO concluded, the company had not shown that the marks acquired a secondary meaning, and the marks were merely descriptive. The TTAB (Trademark Trial and Appellate Board) affirmed these rejections. Booking.com appealed to the U.S. District for the Eastern District of Virginia, arguing that BOOKING.COM was eligible for protection because it was descriptive or suggestive. That court agreed. Although “booking” itself was a generic term describing the types of services the company offered, BOOKING.COM had acquired secondary meaning and was therefore protectable.

The USPTO appealed to the Fourth Circuit, urging the court to find that adding a generic top-level domain (e.g.,“.com”) to an otherwise generic term could never generate a non-generic mark. But the circuit court affirmed the district court, relying in part on evidence showing consumers recognized BOOKING.COM as a brand rather than a generic service. In other words, the appeals court held that if a mark comprised of a top-level domain added to a generic term has source significance to the relevant public, that mark is not automatically ineligible for trademark protection. Earlier this year—eight years after Booking.com sought to register the first relevant trademark—the USPTO filed its petition for certiorari.

GROUNDS TAKEN & REASONS FOR DISMISSAL BY COURT

Two generic terms results in a Generic Mark: The USPTO argued that it was a standard rule set in the case of Goodyear case that two generic terms “generic.com” will only result in another generic term and thus people of the industry could not be deprived of using the generic term describing their product by allowing generic terms to be made exclusive under a trademark.

The court disagreed and held that whether any term is generic or not will solely depend on whether the public sees or understands the term as a class of commodity or whether it identifies it to a particular supplier of service or good.

“ While we reject the rule proffered by the PTO that “generic.com” terms are generic names, we do not embrace a rule automatically classifying such terms as nongeneric. Whether any given “generic.com” term is generic, we hold, depends on whether consumers in fact perceive that term as the name of a class or, instead, as a term capable of distinguishing among members of the class.”

The USPTO also stated that  protecting “generic.com” terms as trademarks would dis-serve trademark law’s animating policies. That is competitors of the same industry will be deterred to use generic terms such as booking, e-booking, hotel-booking etc in domains names as originally the mark booking.com is clearly descriptive.

The court disagreed that the descriptive nature of the mark per se would be the reason that protection under trademark be denied. The court considered the arguments of the booking.com that it had a week mark and that there was a limited scope on their end to prevent other competitors from using any combination of their mark with other words precisely because the mark was descriptive. The court thus suggested relying on earlier judgement that the more descriptive the mark, the less likely that the consumer will confuse the main element of the mark as emanating from the owner of said generic mark. So the use of the term “grand” in so many similar marks etc. was a case in point. Further the court proposed that even if confusion was created the “fair use” doctrine in trademark laws allows the use of generic mark to all competitors equally.   

That concern attends any descriptive mark. Responsive to it, trademark law hems in the scope of such marks short of denying trademark protection altogether. Notably, a competitor’s use does not infringe a mark unless it is likely to confuse consumers. See §§1114(1), 1125(a)(1)(A); 4 McCarthy §23:1.50 (collecting state law). In assessing the likelihood of confusion, courts consider the mark’s distinctiveness: “The weaker a mark, the fewer are the junior uses that will trigger a likelihood of consumer confusion.” 2 id., §11:76. When a mark incorporates generic or highly descriptive components, consumers are less likely to think that other uses of  the common element emanate from the mark’s owner. Ibid. Similarly, “[i]n a ‘crowded’ field of lookalike marks” (e.g., hotel names including the word “grand”), consumers “may have learned to carefully pick out” one mark from another. Id., §11:85. And even where some consumer confusion exists, the doctrine known as classic fair use, see id., §11:45, protects from liability anyone who uses a descriptive term, “fairly and in good faith” and “otherwise than as a mark,” merely to describe her own goods. 15 U. S. C. §1115(b)(4); see KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U. S. 111, 122–123 (2004)

The court also mooted and addressed the issue regarding the anti-competitive nature of allowing exclusive use of generic worded mark concluding, while relying on the principle of “fair use” that the possibility of the combination of using the generic words in other mark was most likely than of it not being used at all and thus such fears of USPTO were unfounded.

The USPTO also raised the argument that allowing using of generic words like booking.com the court will be allowing an unfair advantage to the claimant as his website will automatically figure as the first on any search engine where the word booking was used. Further, even if it is assumed that the mark was very weak to give protection to under law, in which case, there was no point giving registration at all in the first place, since exclusive use to the owner of booking.com word was anyway not possible.

The court disagreed  again suggesting that all descriptive marks establish a strong link between the owner and the good or service offered by a particular owner. However the generic mark fails quite evidently to do so, precisely, because it is generic. Therefore, its unlikely to give the competitive advantage as claimed. Further, The Lanham Act permits registration nonetheless.§1052(e), (f ).

“All descriptive marks are intuitively linked to the product or service and thus might be easy for consumers to find using a search engine or telephone directory. The Lanham Act permits registration nonetheless. See §1052(e), (f ). And the PTO fails to explain how the exclusive connection between a domain name and its owner makes the domain name a generic term all should be free to use. That connection makes trademark protection more appropriate, not less.”

The USPTO had challenged the petition solely on the grounds that combining two generics produced another generic, as the court relying on the above reasons allowed the registration and noted that disallowing the application would have put in peril many generic word marks that had already received registration in the United States.

The PTO challenges the judgment below on a sole ground:
It urges that, as a rule, combining a generic term with “.com” yields a generic composite. For the above-stated reasons, we decline a rule of that order, one that would largely disallow registration of “generic.com” terms and open the door to cancellation of scores of currently registered marks. Accordingly, the judgment of the Court of Appeals for the Fourth Circuit regarding eligibility for trademark registration is                                                                                                                                                     
Affirmed.”

See the judgement: