The question at issue here is whether a term that takes the form “generic.com” is generic in the ordinary course. In the Breyer’s view, appending “.com” to a generic term ordinarily yields no meaning beyond that of its constituent parts. Because the term “Booking.com” is just such an ordinary “generic.com” term it is not eligible for trademark registration.
A top-level domain such as “.com” has no capacity to identify and distinguish the source of goods or services. It is merely a necessary component of any web address. When combined with the generic name of a class of goods or services, “.com” conveys only that the owner operates a website related to such items.
Just as “Wine Company” expresses the generic concept of a company that deals in wine, “wine.com” connotes only a website that does the same. The same is true of “Booking.com.” The combination of “booking” and “.com” does not serve to “identify a particular characteristic or quality of some thing; it connotes the basic nature of that thing” – the hallmark of a generic term.
When a website uses an inherently distinctive second level domain, it is obvious that adding “.com” merely denotes a website associated with that term. Any reasonably well-informed consumer would understand that “postit.com” is the website associated with Post-its. Recognizing this feature of domain names, courts generally ignore the top-level domain when analyzing likelihood of confusion.
Generic second-level domains are no different. The meaning conveyed by “Booking.com” is no more and no less than a website associated with its generic second-level domain, “booking.” This will ordinarily be true of any generic term plus “.com” combination. The term as a whole is just as generic as its constituent parts.
There may be exceptions to this rule in rare cases where the top-level domain interacts with the generic second-level domain in such a way as to produce meaning distinct from that of the terms taken individually.
Likewise, the principles discussed above may apply differently to the newly expanded universe of top-level domains, such as “.guru,” “.club,” or “.vip,” which may “convey information concerning a feature, quality, or characteristic” of the website at issue. “Booking.com” conveys only a website associated with booking.
A generic term may suggest that it is associated with a specific entity. That does not render it non-generic. For example, “Wine, Inc.” implies the existence of a specific legal entity incorporated under the laws of some State. Likewise, consumers may perceive “The Wine Company” to refer to some specific company rather than a genus of companies.
But the addition of the definite article “the” obviously does not transform the generic nature of that term. True, these terms do not carry the exclusivity of a domain name. But that functional exclusivity does not negate the principle animating Goodyear: Terms that merely convey the nature of the producer’s business should remain free for all to use.
This case illustrates the difficulties inherent in the majority’s fact-specific approach. The lower courts determined (as the majority highlights), that consumers do not use the term “Booking.com” to refer to the class of hotel reservation websites in ordinary speech. True, few would call Travelocity a “Booking.com.” But literal use is not dispositive.
Consumers do not use the term “Wine, Incs.” to refer to purveyors of wine. Still, the term “Wine, Inc.” is generic because it signifies only a company incorporated for that purpose. Similarly, “Booking, Inc.” may not be trademarked because it signifies only a booking company. The result should be no different for “Booking.com,” which signifies only a booking website.
There will never be evidence that consumers literally refer to the relevant class of online merchants as “generic.coms.” Nor are “generic.com” terms likely to appear in dictionaries. And the key fact that, in the majority’s view, distinguishes this case from Goodyear – that only one entity can own the rights to a particular domain name at a time – is present in every “generic.com” case.
Survey evidence has limited probative value in this context. Consumer surveys often test whether consumers associate a term with a single source. But it is possible for a generic term to achieve such an association – either because that producer has enjoyed a period of exclusivity in the marketplace, or because it has invested money and effort in securing the public’s identification.
Evidence of such an association, no matter how strong, does not negate the generic nature of the term. For that reason, some courts and the TTAB have concluded that survey evidence is generally of little value in separating generic from descriptive terms.
Under the majority’s approach, a “generic.com” mark’s eligibility for trademark protection turns primarily on survey data, which may be an unreliable indicator of genericness.
In addition to the doctrinal concerns discussed above, granting trademark protection to “generic.com” marks threatens serious anticompetitive consequences in the online marketplace. Granting trademark protection to “generic.com” marks confers additional competitive benefits on their owners by allowing them to exclude others from using similar domain names.
Federal registration would allow respondent to threaten trademark lawsuits against competitors using domains such as “Bookings.com,” “eBooking.com,” “Booker.com,” or “Bookit.com.” Respondent says that it would not do so. But other firms may prove less restrained.
Indeed, why would a firm want to register its domain name as a trademark unless it wished to extend its area of exclusivity beyond the domain name itself? The domain name system, after all, already ensures that competitors cannot appropriate a business’s actual domain name. And unfair-competition law will often separately protect businesses from passing off and false advertising.
Owners of “generic.com” marks may seek to extend the boundaries of their marks through litigation, and may, at times succeed. Even if ultimately unsuccessful, the threat of costly litigation will no doubt chill others from using variants on the registered mark and privilege established firms over new entrants to the market.