Details of the case
In 2011, the USPTO rejected four trademark applications for the term “BOOKING.COM”, filed by the Dutch travel and hotel booking company, Booking.com. The trademark examining attorney determined the trademarks were not protectable because they were generic, or alternately, descriptive but lacking secondary meaning. In 2016, the Trademark Trial and Appeal Board affirmed the trademark examining attorney’s denial of Booking.com’s trademark applications and held that “BOOKING.COM” was merely descriptive and lacked acquired distinctiveness. Booking.com challenged this decision in the U.S. District Court for the Eastern District of Virginia.
In 2020, the Court’s 8-1 decision held that adding “.com” to a generic word can make the entire combination eligible for trademark protection, even though “booking” is a generic term for online hotel reservation services. This decision relied upon survey evidence of the relevant consuming public’s understanding of “BOOKING.COM”. The plaintiff produced a Teflon-style genericness survey which showed that a significant percentage of respondents identified “BOOKING.COM” as a brand name. The Court found the survey results to be “persuasive evidence that the consuming public understands ‘BOOKING.COM’ to be a specific brand and not a generic term.
Trademark distinctiveness
For a trademark to be eligible for registration, it has to meet certain criteria, one of them being distinctiveness. As the purpose of a trademark is to signal a recognizable source of goods or services to the customer, only a distinctive-enough trademark can achieve this purpose without consumer confusion. Descriptive and generic trademarks, therefore, remain the central issue of most trademark registrations.
A descriptive trademark is a term with a dictionary meaning that directly describes some characteristic of the product or service. Descriptive marks are not registrable right away, but if the applicant can prove the brand name has acquired distinctiveness, it can be registered. Examples of such trademarks include Best Buy and American Apparel. The underlying reason stems from the market-wide recognition of these brands, which consequently enabled a successful trademark registration as the brand clearly signals the recognizable source of goods to the customer.
Terms with generic meanings, such as “shoes” for a shoe business or “salt” for sodium chloride, can never acquire distinctiveness and are therefore unregistrable. Moreover, a brand name can become genericized if customers associate the name with a type of product/service rather than a particular brand, which is what happened to aspirin, yo-yo, cellophane and many others. When a brand becomes generic, it loses its right to trademark protection.
What does this mean for other generic trademarks?
Any decision by the Supreme Court, especially in a fundamental issue of trademark law, such as what is generic and what is protectable, will have consequences for future settlement of similar trademark disputes. This decision is a noteworthy win for brand owners, as it affirms that the consumers' interests are at the very forefront when it comes to brand names and underscores the importance of consumer perception evidence for those seeking to register arguably generic or descriptive terms as trademarks.
On the other hand, the answer to the question of whether the "GENERIC.COM" trademark is or is not considered generic remains the same - it depends. Adding ".COM" to an otherwise generic and unregistrable trademark does not automatically affect whether the trademark qualifies for trademark protection. The main takeaway is as follows: generic and descriptive words make alluring trademarks because of the powerful way they communicate your message to consumers. But they are very difficult to protect and remain so even after this decision.
