Trademark
Booking.com
Generic Name
Generic Name to Consumers
Evidence of Consumer Perception
Service Mark v. Trademark
Protection Without Federal Registration
Secondary Meaning (= Acquired Distinctiveness)
A
generic name—the name of a class of products or services—is ineligible
for
federal trademark registration. Respondent Booking.com, an enterprise that
maintains a travel-reservation website by the same name, sought federal
registration of marks including the term “Booking.com.” Concluding that
“Booking.com” is a generic name for online hotel-reservation services, the U.
S. Patent and Trademark Office (PTO) refused registration. Booking.com sought
judicial review, and the District Court determined that “Booking.com”—unlike
the term “booking” standing alone—is not generic. The Court of
Appeals affirmed, finding no error in the District Court’s assessment of how
consumers perceive the term “Booking.com.” The appellate court also rejected
the PTO’s contention that, as a rule, combining a generic term
like
“booking” with “.com” yields a generic composite.
Held:
A term styled “generic.com” is a generic name for a class of goods
or
services only if the term has that meaning to consumers.
Whether
a compound term is generic turns on whether that term,
taken as a
whole, signifies to consumers a class of goods or services. The courts below
determined, and the PTO no longer disputes, that consumers do not in fact
perceive the term “Booking.com” that way. Because “Booking.com” is not a
generic name to consumers, it is not generic.
(…) Even without federal registration, a mark may be eligible
for protection against infringement under both the Lanham Act and other sources
of law. See Matal, 582 U. S., at ___–___ (slip op., at 4–5).
(…) Distinctiveness is often expressed on an increasing scale:
Word marks “may be (1) generic; (2) descriptive; (3) suggestive; (4) arbitrary;
or (5) fanciful.” Two Pesos, Inc. v. Taco Cabana, Inc., 505 U. S.
763, 768 (1992).
The
more distinctive the mark, the more readily it qualifies for the principal register.
The most distinctive marks— those that are “‘arbitrary’ (‘Camel’ cigarettes),
‘fanciful’ (‘Kodak’ film), or ‘suggestive’ (‘Tide’ laundry detergent)”—may be
placed on the principal register because they are “inherently distinctive.”
Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U. S. 205, 210–211 (2000).
“Descriptive” terms, in contrast, are not eligible for the principal
register based on their inherent qualities alone. E.g., Park ’N Fly,
Inc. v. Dollar Park & Fly, Inc., 718 F. 2d 327, 331 (CA
91983)
(“Park ’N Fly” airport parking is descriptive), rev’d on
other
grounds, 469 U. S. 189 (1985). The Lanham Act, “liberalizing the common law,”
“extended protection to descriptive marks.” Qualitex Co. v. Jacobson Products
Co., 514 U. S. 159, 171 (1995). But to be placed on the principal register,
descriptive terms must achieve significance “in the minds of the public” as
identifying the applicant’s goods or services—a quality
called “acquired distinctiveness” or “secondary meaning.” Wal-Mart Stores, 529 U.
S., at 211. (internal quotation marks omitted); see §1052(e), (f ).
Without
secondary meaning, descriptive terms may be eligible only for the
supplemental register. §1091(a).
At
the lowest end of the distinctiveness scale is “the generic name for the goods
or services.” §§1127, 1064(3), 1065(4). The name of the good itself (e.g.,
“wine”) is incapable of “distinguishing one producer’s goods from the
goods of others” and is therefore ineligible for registration. §1052; see
§1091(a). Indeed, generic terms are ordinarily ineligible for protection as
trademarks at all. See Restatement (Third) of Unfair Competition §15, p. 142
(1993); Otokoyama Co. v. Wine of Japan Import, Inc., 175 F. 3d 266, 270 (CA2
1999) (“Everyone may use generic terms to refer to the goods they designate.”).
(For simplicity, this opinion uses the term “trademark” to
encompass the marks whose registration Booking.com seeks. Although
Booking.com uses the marks in connection with services, not goods, rendering
the marks
“service marks” rather than “trademarks” under 15 U. S. C. §1127, that
distinction is immaterial to the issue before us.)
Because
“Booking.com” is not a generic name to consumers, it is not generic.
“generic.com”
term might also convey to consumers a source-identifying characteristic: an
association with a particular website. As the PTO and the dissent elsewhere
acknowledge, only one entity can occupy a particular Internet domain name at a
time, so “a consumer who is familiar with that aspect of the domain-name
system
can infer that BOOKING.COM refers to some specific entity.” Brief for
Petitioners 40. See also Tr. of Oral Arg. 5 (“Because domain names are one of a
kind, a significant portion of the public will always understand a generic
‘.com’ term to refer to a specific business . . . .”); post, at 7 (the
“exclusivity” of “generic.com” terms sets them apart from terms like “Wine,
Inc.” and “The Wine Company”).Thus, consumers could understand a given
“generic.com” term to describe the corresponding website or to identify the
website’s proprietor.
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.
(…) Evidence informing that inquiry can include not only
consumer surveys, but also dictionaries, usage by consumers and competitors,
and any other source of evidence bearing on how consumers perceive a term’s
meaning. Surveys can be helpful evidence of consumer perception but require
care in their design and interpretation.
(…) Ensuring that registration of “Booking.com”
would not yield its holder a monopoly on the term “booking.” Booking.com
concedes that “Booking.com” would be a “weak” mark.
Tr. of Oral Arg. 66. See also id., at 42–43, 55. The mark is descriptive,
Booking.com recognizes, making it “harder . . . to show a likelihood of confusion.”
Id., at 43. Furthermore, because its mark is one of many “similarly worded
marks,” Booking.com accepts that close variations are
unlikely to infringe. Id., at 66. And Booking.com acknowledges that federal
registration of “Booking.com” would not prevent competitors
from using the word “booking” to describe their own services.
Secondary sources: McCarthy, Trademarks and Unfair Competition
§19:37 (5th ed. 2019); Restatement (Third) of Unfair Competition §15, p. 142
(1993); Trademark Manual of Examining Procedure
§1209.01(c)(i), p. 1200–267 (Oct. 2018), http://tmep.uspto.gov.
(U.S. Supreme Court, June 30, 2020, Patent and
Trademark Office v. Booking.com B.V., Docket No. 19-46, J. Ginsburg, Sotomayor,
J., filed a concurring opinion. Breyer, J., filed a
dissenting opinion)
