On November 8, 2019 The Supreme Court of the United States granted certiorari to hear an Appeal by the United States Patent and Trademark Office (USPTO) of a 4th U.S. Circuit Court of Appeals affirming The U.S. District Court for the Eastern District of Virginia decision reversing the denial of registration by the USPTO of booking.com trademark application.

The U.S. District Court for the Eastern District of Virginia found that “although the word “booking” is generic for the offered services, the term BOOKING.COM as a whole was descriptive. A descriptive mark, it is registrable under Section 2(f) of the Trademark Act, 15 U.S.C. §1052(f), which “permits the registration of a mark that is not inherently distinctive on the Principal Register upon proof that the mark has acquired distinctiveness in relation to the applicant’s goods or services in commerce.”

The question presented before the U.S. Supreme Court is as follows:

Whether the addition by an online business of a generic top-level domain (“.com”) to an otherwise generic term can create a protectable trademark.

There are four categories of distinctiveness for trademarks: (1) generic, (2) descriptive, 3) suggestive, or (4) arbitrary or fanciful. See George & Co. v. Imagination Entm’t Ltd., 575 F.3d 383, 393–94 (4th Cir. 2009). Marks that are suggestive, arbitrary or fanciful are deemed inherently distinctive and are entitled to protection. Descriptive terms may be distinctive upon proof that the mark has acquired distinctiveness, and generic terms are never distinctive, thus unregistrable.

Booking.com argued the mark is descriptive, thus registrable upon proof of acquired distinctiveness and the USPTO arguing it is generic, thus unregistrable.

“A term is generic if it is the “common name of a product” or “the genus of which the particular product is a species,” such as LITE BEER for light beer, or CONVENIENT STORE for convenience stores. OBX-Stock, Inc., 558 F.3d at 340.”

“Accordingly, generic terms can never obtain trademark protection, as trademarking a generic term effectively grants the owner a monopoly over a term in common coinage.

“In contrast, descriptive terms, which may be protectable, describe a “function, use, characteristic, size, or intended purpose of the product,” such as 5 MINUTE GLUE or KING SIZE MEN’S CLOTHING. Sara Lee Corp. v. Kayser-Roth Corp., 81 F.3d 455, 464 (4th Cir. 1996). In order to be protected, a descriptive term must have acquired secondary meaning. Hunt Masters, Inc. v. Landry’s Seafood Rest., Inc., 240 F.3d 251, 254 (4th Cir. 2001).”

“Distinctiveness is acquired by “substantially exclusive and continuous use’ of the mark in commerce.” In re Owens-Corning Fiberglas Corporation, 774 F.2d 1116, 227 USPQ 417, 424 n. 11 (Fed. Cir. 1985), citing, Levi Strauss & Co. v. Genesco, Inc., 742 F.2d 1401, 222 USPQ 939, 942 (Fed. Cir. 1984).

The Trademark Trial and Appeal Board, on booking.com’ appeal of the USPTO denial of registration, concluded that “BOOKING.COM was a generic term for the services offered, and therefore ineligible for trademark protection, because “booking” generically refers to “a reservation or arrangement to buy a travel ticket or stay in a hotel room” or “the act of reserving such travel or accommodation”; “.com” indicates a commercial website; and consumers would understand the resulting composite BOOKING.COM to primarily refer to an online reservation service for travel, tours, and lodging, which are the services proposed in Booking.com’s applications. Booking.com B.V. v. Matal, 278 F. Supp. 3d 891, 896 (E.D. Va. 2017) (summarizing the TTAB’s findings). In the alternative, the TTAB concluded that BOOKING.COM is merely descriptive of Booking.com’s services and that Booking.com had failed to demonstrate that the mark had acquired secondary meaning, as required for trademark protection.”

Booking.com conceded that the term is merely descriptive and had acquired secondary meaning thus could be registered but insisted that the mark is not generic.

The district court held that although “booking” was a generic term for the services identified, BOOKING.COM as a whole was nevertheless a descriptive mark. The district court further determined that Booking.com had met its burden of demonstrating that the proposed mark had acquired secondary meaning, and therefore was protectable.

On the contrary, other circuits that found generic domain names to be generic, including HOTELS.COM, LAWYERS.COM, ADVERTISING.COM, and MATTRESS.COM.

Against this backdrop will the U.S. Supreme Court most likely will hear the case in the spring and decide the case by June.

I have helped countless small to medium sized businesses navigate the intricacies of genericness  and descriptiveness in trademark law to secure and protect their intellectual property rights. I’d like to help you too by protecting your rights to trademarks, copyrights, and other intellectual property rights in the US and overseas before a trademark squatter does.

Augusto Perera, Esq.
Intellectual Property, Business and Legal Affairs Attorney

Augusto Perera, P.A.
2525 Ponce de Leon Boulevard
Suite #300
Coral Gables, FL 33134

Tel. 305-489-1901
Tel. 888-581-0816
F: 305-721-1532
C: 786-200-8674 (Call, Text or WhatsApp)
E: ap@tmmiami.com
www.tmmiami.com

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