Booking.com can be Registered as a Trademark - Not Generic

The Supreme Court reversed the Trademark Office's conclusion that booking.com is a generic term that cannot be registered as a trademark. The Supreme Court's decision rejected a per se rule that a generic term accompanied by a .com is still generic. Practically speaking this opens the door for a broad class of generic top level domain names to be registered as trademarks.

The Court's entire decision turns on its distaste for a per se rule that would not allow evidence of consumer perception. Clearly, the Court found the allure of evidence of consumer perception too much to resist. While I disagree with the Court's decision, it does have practical import for businesses dealing with cybersquatting and phishing scams.

In particular, it is common for third parties to register generic terms with different top level domains, e.g. booking.co, booking.us etc. Having filed a number of actions to transfer these types of domains when they are registered in bad faith or as a part of scam activity, I know that having a trademark registration is a powerful tool. See my previous blog post: https://www.ipintelligencereport.com/2016/12/27/somethings-phishy-here-addressing-internet-scams-through-intellectual-property-strategy/

I disagree with the decision in that I believe it is inconsistent with the mark strength spectrum. The spectrum includes generic (not capable of protection), descriptive (capable of protection only with evidence of secondary meaning), suggestive and arbitrary marks. The last two categories are inherently capable of protection. Generic terms are not capable of protection to prevent one entity from monopolizing a term that is used to describe a good or service.

The Court's decision opens the door to present evidence of consumer perception, however, I believe it is will be difficult to distinguish evidence of consumer perception from evidence of secondary meaning which is influenced by the amount of advertising an entity can afford. The Court appears to have rationalized considering such evidence based on the false premise that booking.com, if registered, would be a weak mark. The truth is a generic term is not a weak mark it simply is not a mark.

The Trademark Office correctly argues that no amount of investment in advertising can save a generic term. Moreover, generic terms are necessarily limited in that they must be considered in context with the goods or services to which they apply. For example, Apple for computers is arbitrary where apple for the sale of apples would be generic. It has been my experience that the Office will register marks that combine a generic term with a top level domain when the context of the goods and services demonstrates that the mark differs from the goods/services to which it is applied. Recognizing the rare instances in which the Office finds terms generic, I would have sided with the Trademark Office.

Interestingly, booking.com did not present evidence of consumer perception to the Trademark office. Instead, it introduced this evidence on appeal. Trademark office procedures are unique in that they allow an appeal to the Eastern District Court of Virginia to permit an applicant to introduce evidence that it was not able to introduce during the application process. This gives the applicant the freedom to introduce surveys, deposition testimony and the like that the trademark office normally would not consider. In booking.com's case, this evidence was pivotal in the finding that booking.com was not generic.

Practical Takeaways:

1. Generic Top Level Domain Combinations can be Registered

If adding a .com would permit registration of an otherwise generic term because only one owner may occupy the top level domain, it stands to reason that combinations of a generic term with other top level domains (.co, .us., .edu., .gov etc.) should be capable of registration. Therefore, owners of domains that include a generic term should consider trademark registration. As identified above, having a registered trademark can be instrumental in domain name disputes in that it is considered per se evidence of exclusivity.

2. The Scope of Generic Domain Registrations Is Unclear

The Court's decision does not provide guidance as to the scope of such exclusivity and it will be interesting to see how this plays out. For example, can booking.com prevent registration or use of booking.us?

3. Applicant Should Consider Gathering Consumer Perception Evidence Before Filing

As noted, to allow an applicant to submit evidence of consumer perception, the Supreme Court rejected the Office's per se rule. Presumably, if the consumer perception recognizes the ability of the combination of a generic term and top level domain to distinguish a source, it would be capable of registration. The Court did not consider the weight of the evidence in booking.com because the Trademark Office did not dispute the district court's findings on this point. Nevertheless, I would expect trademark examiners to continue to reject these types of marks as generic based on dictionary definitions and other readily available evidence. In doing so, the applicant will have to overcome this evidence to demonstrate that its generic domain combination is not generic.

When considering registration, the analysis should include the available evidence of consumer perception. Ideally, the applicant would have this evidence on hand when filing the trademark application. But the desirability of being first to the trademark office may outweigh accumulating evidence of consumer perception. Booking.com demonstrates that an applicant may need to consider use of the district court appeal option to introduce additional evidence otherwise unavailable during the Office's review of their mark. While going this route adds significant expense to the appeal process, it may be the key to obtaining registration.

Conclusion:

Overall, the Supreme Court's decision expands the universe of registrable marks to include generic domain name combinations. Beneficially, it potentially gives companies using such domains as brands a more powerful tool to prevent cybersquatting and phishing scams. The scope of registration is unclear and whether these companies will use their registrations to prevent competition remain to be seen. It will be interesting to follow the decisions interpreting the scope of such trademarks.

In the meantime, if you have questions, about trademark registration, domain name disputes, cybersquatting and phishing campaigns, feel free to comment below or reach out via my website www.cuecardslegal.com.