Posted by Post by Stephanie Nikitenko
In May 2020, I discussed the oral arguments held in the Supreme Court case USPTO v. Booking.com, which centered around the question of whether the addition of “.com” to a generic term creates a protectable trademark. On June 30, 2020, an 8-1 decision authored by Supreme Court Justice Ginsburg was issued in favor of Booking.com, holding “a term styled ‘generic.com’ is a generic name for a class of goods or services—and thus ineligible for federal trademark protection—only if the term has that meaning to consumers.” [1]
The Decision
The decision rejects the per se rule created by the United States Patent and Trademark Office (PTO) that a generic word followed by “.com” is necessarily generic and therefore ineligible for trademark protection. The Supreme Court recognized that affirmance of the PTO’s per se rule would have “opened the door to cancellation of scores of currently registered marks.” [2] Justice Ginsburg specifically noted inconsistency with the per se rule on the part of the PTO due to its past practice of granting trademark registration for “generic.com” domain names such as Art.com and Dating.com. [3]
In his dissent, Justice Breyer addressed PTO concerns that it would be anticompetitive for Booking.com to enjoy a monopoly on the word “booking.” [4] The Court noted that Booking.com stated that the registration would not let it block other trademarks, including “booking,” but simply the whole mark as Booking.com. [5]
This decision only deals with the question of legitimacy of the PTO’s per se rule against registering generic domain names. [6] The question of how evidence of a mark’s significance should be weighed and analyzed, however, remains. [7]
Impact
There are competing thoughts on how this decision will impact the trademark registration process. Some professionals argue that this has been one step forward and two steps back because it has created a race to the courthouse for “any website that can show significance to the relevant consumer” now that the power has shifted to allowing evidence of public perception to determine trademark eligibility. [8] Conversely, there are other professionals who believe the Supreme Court was correct in its decision because at its core, trademark law is an area of the law built around consumer perception and brand recognition. Booking.com refers to a specific company, and therefore functions as a brand name, which would allow it to be registrable as a trademark. [9]
Final Thought
There is often the conception that the PTO is more focused on denying registrations than accepting them. Many professionals hope that this decision is a step in the direction of progress for the PTO making examination processes more uniform and ultimately accepting more trademark applications.
[1] United States Patent and Trademark Office v. Booking.com B.V., Scotus blog (June 2020), https://www.scotusblog.com/case-files/cases/united-states-patent-and-trademark-office-v-booking-com-b-v/.
[2] Robert Zelnick, Supreme Court: “Booking.com” Can Be Registered as Trademark, JD Supra (July 2020), https://www.jdsupra.com/legalnews/supreme-court-booking-com-can-be-72293/.
[3] Id.
[4] Id.
[5] Blake Brittain and Kyle Jahner, Supreme Court Affirms Validity of ‘Booking.com’ Trademark, Bloomberg Law (June 2020), https://news.bloomberglaw.com/ip-law/supreme-court-affirms-validity-of-booking-com-trademark.
[6] Id.
[7] Eileen McDermott, The Consumer is King: High Court Sides with Booking.com, Rejecting Per Se Test for Generic.Com Trademarks, IP Watchdog (June 2020), https://www.ipwatchdog.com/2020/06/30/the-consumer-is-king-high-court-sides-with-booking-com-rejecting-per-se-test-for-generic-com-trademarks/id=122960/.
[8] Id.
[9] Id.
About the Author:
Stephanie Nikitenko recently graduated from UIC John Marshall Law School in Chicago. At UIC John Marshall, she served as the President of the Intellectual Property Law Society (IPLS) and primarily concentrates her studies on the subject of Intellectual Property. She also spent a semester working in the JMLS Trademark Clinic where she assisted clients with the Trademark Registration process with the USPTO. Additionally, under the supervision of an attorney, she currently assists a law firm with both their trademark and patent matters.