{"id":3331,"date":"2020-07-25T13:46:31","date_gmt":"2020-07-25T13:46:31","guid":{"rendered":"https:\/\/www.dekuzu.com\/en\/?p=3331"},"modified":"2020-07-25T13:46:34","modified_gmt":"2020-07-25T13:46:34","slug":"booking-trademark","status":"publish","type":"post","link":"https:\/\/www.dekuzu.com\/en\/2020\/07\/booking-trademark.html","title":{"rendered":"Whether there is a nearly per se rule against trademark protection for a \u201cgeneric.com\u201d term?"},"content":{"rendered":"\n

A generic name \u2013 the name of a class of products or services \u2013 is ineligible for federal trademark registration. Booking.com, an enterprise that maintains a travel-reservation website by the same name, sought federal registration of marks including the term \u201cBooking.com.\u201d<\/span><\/p>\n

<\/span><\/p>\n

Both a PTO examining attorney and the PTO\u2019s Trademark Trial and Appeal Board concluded that the term \u201cBooking.com\u201d is generic for the services at issue and is therefore unregistrable. \u201cBooking,\u201d the Board observed, means making travel reservations, and \u201c.com\u201d signifies a commercial website.<\/span><\/p>\n

The Board then ruled that \u201ccustomers would understand the term booking.com primarily to refer to an online reservation service for travel, tours, and lodgings.\u201d Alternatively, the Board held that even if \u201cBooking.com\u201d is descriptive, not generic, it is unregistrable because it lacks secondary meaning.<\/span><\/p>\n

Booking.com sought judicial review, and the District Court determined that \u201cBooking.com\u201d \u2013 unlike the term \u201cbooking\u201d standing alone \u2013 is not generic. Having determined that \u201cBooking.com\u201d is descriptive, the District Court additionally found that the term has acquired secondary meaning as to hotel-reservation services. For those services, the District Court therefore concluded, Booking.com\u2019s marks meet the distinctiveness requirement for registration.<\/span><\/p>\n

The PTO appealed only the District Court\u2019s determination that \u201cBooking.com\u201d is not generic. Finding no error in the District Court\u2019s assessment of how consumers perceive the term \u201cBooking.com,\u201d the Court of Appeals for the Fourth Circuit affirmed the court of first instance\u2019s judgment.<\/span><\/p>\n

In so ruling, the appeals court rejected the PTO\u2019s contention that the combination of \u201c.com\u201d with a generic term like \u201cbooking\u201d \u201cis necessarily generic.\u201d Dissenting in relevant part, Judge Wynn concluded that the District Court mistakenly presumed that \u201cgeneric.com\u201d terms are usually descriptive, not generic.<\/span><\/p>\n

According to the PTO, adding \u201c.com\u201d to a generic term \u2013 like adding \u201cCompany\u201d \u2013 can convey no source-identifying meaning. That premise is faulty, for only one entity can occupy a particular Internet domain name at a time, so a \u201cgeneric.com\u201d term could convey to consumers an association with a particular website.<\/span><\/p>\n

Moreover, an unyielding legal rule that entirely disregards consumer perception is incompatible with a bedrock principle of the Lanham Act: The generic (or non-generic) character of a particular term depends on its meaning to consumers, i.e., do consumers in fact perceive the term as the name of a class or, instead, as a term capable of distinguishing among members of the class.<\/span><\/p>\n

The PTO\u2019s policy concerns do not support a categorical rule against registration of \u201cgeneric.com\u201d terms. The PTO asserts that trademark protection for \u201cBooking.com\u201d would give the mark owner undue control over similar language that others should remain free to use.<\/span><\/p>\n

That concern attends any descriptive mark. Guarding against the anticompetitive effects the PTO identifies, several doctrines ensure that registration of \u201cBooking.com\u201d would not yield its holder a monopoly on the term \u201cbooking.\u201d<\/span><\/p>\n

The PTO also doubts that owners of \u201cgeneric.com\u201d brands need trademark protection in addition to existing competitive advantages. Such advantages, however, do not inevitably disqualify a mark from federal registration. Finally, the PTO urges that Booking.com could seek remedies outside trademark law, but there is no basis to deny Booking.com the same benefits Congress accorded other marks qualifying as nongeneric.<\/span><\/p>\n

Although the parties here disagree about the circumstances in which terms like \u201cBooking.com\u201d rank as generic, several guiding principles are common ground. First, a \u201cgeneric\u201d term names a \u201cclass\u201d of goods or services, rather than any particular feature or exemplification of the class. Second, for a compound term, the distinctiveness inquiry trains on the term\u2019s meaning as a whole, not its parts in isolation. Third, the relevant meaning of a term is its meaning to consumers.<\/span><\/p>\n

Under these principles, whether \u201cBooking.com\u201d is generic turns on whether that term, taken as a whole, signifies to consumers the class of online hotel-reservation services. Thus, if \u201cBooking.com\u201d were generic, we might expect consumers to understand Travelocity \u2013 another such service \u2013 to be a \u201cBooking.com.\u201d<\/span><\/p>\n

Opposing that conclusion, the PTO urges a nearly per se rule that would render \u201cBooking.com\u201d ineligible for registration regardless of specific evidence of consumer perception. In the PTO\u2019s view, which the dissent embraces, when a generic term is combined with a generic top-level domain like \u201c.com,\u201d the resulting combination is generic. In other words, every \u201cgeneric.com\u201d term is generic according to the PTO, absent exceptional circumstances. The PTO\u2019s own past practice appears to reflect no such comprehensive rule.<\/span><\/p>\n

Thus, consumers could understand a given \u201cgeneric.com\u201d term to describe the corresponding website or to identify the website\u2019s proprietor. We therefore resist the PTO\u2019s position that \u201cgeneric.com\u201d terms are capable of signifying only an entire class of online goods or services and, hence, are categorically incapable of identifying a source.<\/span><\/p>\n

The PTO also invokes the oft-repeated principle that \u201cno matter how much money and effort the user of a generic term has poured into promoting the sale of its merchandise …, it cannot deprive competing manufacturers of the product of the right to call an article by its name.\u201d That principle presupposes that a generic term is at issue. But the PTO\u2019s only legal basis for deeming \u201cgeneric.com\u201d terms generic is its mistaken reliance on Goodyear.<\/span><\/p>\n

While the court rejects the rule proffered by the PTO that \u201cgeneric.com\u201d terms are generic names, the court does not embrace a rule automatically classifying such terms as nongeneric. Whether any given \u201cgeneric.com\u201d term is generic 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.<\/span><\/p>\n

The PTO\u2019s principal concern is that trademark protection for a term like \u201cBooking.com\u201d would hinder competitors. But the PTO does not assert that others seeking to offer online hotel-reservation services need to call their services \u201cBooking.com.\u201d<\/span><\/p>\n

Rather, the PTO fears that trademark protection for \u201cBooking.com\u201d could exclude or inhibit competitors from using the term \u201cbooking\u201d or adopting domain names like \u201cebooking.com\u201d or \u201chotel-booking.com.\u201d The PTO\u2019s objection, therefore, is not to exclusive use of \u201cBooking.com\u201d as a mark, but to undue control over similar language, i.e., \u201cbooking,\u201d that others should remain free to use.<\/span><\/p>\n

That concern attends any descriptive mark. Responsive to it, trademark law hems in the scope of such marks short of denying trademark protection altogether. Notably, a competitor\u2019s use does not infringe a mark unless it is likely to confuse consumers. In assessing the likelihood of confusion, courts consider the mark\u2019s distinctiveness: \u201cThe weaker a mark, the fewer are the junior uses that will trigger a likelihood of consumer confusion.\u201d<\/span><\/p>\n

Booking.com concedes that \u201cBooking.com\u201d would be a \u201cweak\u201d mark. The mark is descriptive, Booking.com recognizes, making it \u201charder… to show a likelihood of confusion.\u201d Furthermore, because its mark is one of many \u201csimilarly worded marks,\u201d Booking.com accepts that close variations are unlikely to infringe. And Booking.com acknowledges that federal registration of \u201cBooking.com\u201d would not prevent competitors from using the word \u201cbooking\u201d to describe their own services.<\/span><\/p>\n

The PTO also doubts that owners of \u201cgeneric.com\u201d brands need trademark protection in addition to existing competitive advantages. Booking.com, the PTO argues, has already seized a domain name that no other website can use and is easy for consumers to find. Consumers might enter \u201cthe word \u2018booking\u2019 in a search engine,\u201d the PTO observes, or \u201cproceed directly to \u2018booking.com\u2019 in the expectation that online hotel-booking services will be offered at that address.\u201d<\/span><\/p>\n

Those competitive advantages, however, do not inevitably disqualify a mark from federal registration. All descriptive marks are intuitively linked to the product or service and thus might be easy for consumers to find using a search engine or telephone directory. The Lanham Act permits registration nonetheless.<\/span><\/p>\n

And the PTO failed to explain how the exclusive connection between a domain name and its owner makes the domain name a generic term all should be free to use. That connection makes trademark protection more appropriate, not less. The court did not find any cause to deny Booking.com the same benefits Congress accorded other marks qualifying as nongeneric.<\/span><\/p>\n

The PTO challenges the judgment below on a sole ground: It urges that, as a rule, combining a generic term with \u201c.com\u201d yields a generic composite. For the above-stated reasons, the court declined a rule of that order, one that would largely disallow registration of \u201cgeneric.com\u201d terms and open the door to cancellation of scores of currently registered marks. Accordingly, the judgment of the Court of Appeals for the Fourth Circuit regarding eligibility for trademark registration is Affirmed<\/a>.<\/span><\/p>\n","protected":false},"excerpt":{"rendered":"

PTO and the PTO\u2019s Trademark Trial and Appeal Board concluded that the term \u201cBooking.com\u201d is generic for the services at issue and is therefore unregistrable<\/p>\n

Continue readingWhether there is a nearly per se rule against trademark protection for a \u201cgeneric.com\u201d term?<\/span><\/a><\/div>\n","protected":false},"author":1,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[15,6,39,18,17],"tags":[],"class_list":["post-3331","post","type-post","status-publish","format-standard","hentry","category-trademark","category-intellectual-property","category-interpretation","category-law","category-litigation","entry"],"_links":{"self":[{"href":"https:\/\/www.dekuzu.com\/en\/wp-json\/wp\/v2\/posts\/3331","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/www.dekuzu.com\/en\/wp-json\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/www.dekuzu.com\/en\/wp-json\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/www.dekuzu.com\/en\/wp-json\/wp\/v2\/users\/1"}],"replies":[{"embeddable":true,"href":"https:\/\/www.dekuzu.com\/en\/wp-json\/wp\/v2\/comments?post=3331"}],"version-history":[{"count":1,"href":"https:\/\/www.dekuzu.com\/en\/wp-json\/wp\/v2\/posts\/3331\/revisions"}],"predecessor-version":[{"id":3332,"href":"https:\/\/www.dekuzu.com\/en\/wp-json\/wp\/v2\/posts\/3331\/revisions\/3332"}],"wp:attachment":[{"href":"https:\/\/www.dekuzu.com\/en\/wp-json\/wp\/v2\/media?parent=3331"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/www.dekuzu.com\/en\/wp-json\/wp\/v2\/categories?post=3331"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/www.dekuzu.com\/en\/wp-json\/wp\/v2\/tags?post=3331"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}