{"id":7630,"date":"2020-07-06T18:14:00","date_gmt":"2020-07-06T18:14:00","guid":{"rendered":"https:\/\/cpip.gmu.edu\/?p=7630"},"modified":"2026-02-03T20:28:03","modified_gmt":"2026-02-03T20:28:03","slug":"consumer-perception-wins-the-day-a-case-overview-of-uspto-v-booking-com","status":"publish","type":"post","link":"https:\/\/blogs.uakron.edu\/ualawip\/2020\/07\/06\/consumer-perception-wins-the-day-a-case-overview-of-uspto-v-booking-com\/","title":{"rendered":"[Archived Post] Consumer Perception Wins the Day: A Case Overview of USPTO v. Booking.com<\/em>"},"content":{"rendered":"

The following post comes from Ryan Reynolds, a rising 3L at Scalia Law and a Research Assistant at CPIP.<\/em><\/strong><\/p>\n

\"U.S.By Ryan Reynolds<\/strong><\/em><\/p>\n

Last week, the Supreme Court in USPTO v. Booking.com<\/em><\/a> held that a combination of an otherwise generic term and a generic top-level domain (TLD) may be protected as a trademark so long as consumers perceive it as capable of distinguishing among the members of a class of goods or services and not as a reference to the class itself. The Court rejected the nearly per se rule applied by the United States Patent and Trademark Office (USPTO) that such combinations are necessarily generic.<\/p>\n

The Background<\/strong><\/p>\n

Between 2011 and 2012, Booking.com filed four trademark registration applications for the \u201cBooking.com\u201d mark with the USPTO. The USPTO denied the registrations because it found that the mark was generic as applied to online hotel reservation services. On appeal, the Trademark Trial and Appeal Board (TTAB) affirmed the denial. The TTAB analyzed \u201cBooking\u201d and \u201c.com\u201d separately and found the mark generic.<\/p>\n

The Lanham Act provides<\/a> that a trademark is \u201cany word, name, symbol, or device\u201d used by a person in commerce \u201cto identify and distinguish his or her goods . . . from those manufactured or sold by others and to indicate the source of the goods.\u201d Five categories of marks are recognized under the Lanham Act that have varying levels of protection. Fanciful, arbitrary, and suggestive marks receive immediate protection. Descriptive marks only receive protection upon showing secondary meaning, that is, once consumers understand the mark to communicate a single source. Lastly, generic marks can never receive trademark protection. A generic mark does not help a consumer distinguish one good or service from another; it instead merely refers to the common name of the good or service itself. The restriction on generic marks is based on the concern that competitors should have free use of the terms necessary to identify their products or services to consumers.<\/p>\n

Having lost at the TTAB, Booking.com then filed suit in the U.S. District Court for the Eastern District of Virginia. The district court applied the primary significance test, which states<\/a>: \u201c[T]he primary significance of the registered mark to the relevant public . . . shall be the test for determining whether the registered mark has become the generic name of goods or services in connection with which it has been used.\u201d The district court held that “Booking.com” was a descriptive mark that had acquired secondary meaning, based on the perception of the mark by the relevant consuming public. On appeal, the U.S. Court of Appeals for the Fourth Circuit affirmed, finding that “Booking.com” was eligible for trademark protection. The USPTO then petitioned the Supreme Court for a writ of certiorari, which was granted.<\/p>\n

The Arguments<\/strong><\/p>\n

The central issue was whether the Lanham Act had legislatively overruled the Supreme Court\u2019s 132-year-old decision in Goodyear\u2019s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co.<\/em><\/a> In Goodyear\u2019s<\/em>, the Court created a per se rule that the addition of an entity designator such as \u201ccompany\u201d to the end of an otherwise generic mark could not create a valid trademark. The Court reasoned that entity designators do not serve a source-identifying function, but instead only indicate that parties have formed an association to deal in goods or services.<\/p>\n

The USPTO contended that, like entity designators, TLDs such as “.com” do not serve a source-identifying function as they only communicate a business\u2019 online presence to the public. Therefore, it argued that Goodyear\u2019s <\/em>per se rule controlled the case as both lower courts had found \u201cBooking\u201d alone to be generic. It further argued that ruling for Booking.com would cause competitive harm by opening the door to the registration of countless generic marks. It stressed that this harm was heightened by the competitive advantages the internet already grants to Booking.com as the only party that can use its domain name. It argued that, due to these competitive advantages and the opportunity for Booking.com to pursue protection under unfair competition laws, “Booking.com” does not require trademark protection.<\/p>\n

In contrast, Booking.com alleged that the Lanham Act had legislatively overruled Goodyear\u2019s<\/em> through its creation of the primary significance test. It argued that the primary significance test is the exclusive test for all marks to determine genericism, with the Lanham Act creating no special category for domain names as marks. Likewise, Booking.com maintained that the piecemeal analysis by the USPTO of \u201cBooking\u201d and \u201c.com\u201d separately went against the Lanham Act\u2019s directive to assess the mark as a whole for purposes of registration.<\/p>\n

Booking.com further contended that the primary significance test reinforces the aims of trademark law by helping consumers navigate the marketplace. By requiring marks to pass both the primary significance test and show secondary meaning in order to receive protection as a descriptive mark, non-source-identifying marks are eliminated. Booking.com also pointed out that the USPTO has inconsistently applied Goodyear\u2019s <\/em>per se rule by allowing marks similar to “Booking.com” to be registered, and this inconsistency has not caused harm to fair competition in the marketplace. It also warned that the USPTO\u2019s per se rule would usher in a \u201cmass extinction event\u201d for hundreds of registered marks.<\/p>\n

\u00a0<\/strong>The Ruling<\/strong><\/p>\n

In its opinion<\/a> affirming the Fourth Circuit\u2019s decision, the Supreme Court rejected the USPTO\u2019s per se rule as to combination terms like \u201cBooking.com.\u201d The majority opinion, authored by Justice Ginsburg and joined by seven other justices, held: \u201cWhether any given \u2018generic.com\u2019 term is generic, we hold, 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.\u201d<\/p>\n

The majority stated that USPTO\u2019s reliance on Goodyear\u2019s<\/em> was flawed since it would find terms ineligible for trademark protection even if consumers would understand them to signify source: \u201cThat bedrock principle of the Lanham Act is incompatible with an unyielding legal rule that entirely disregards consumer perception.\u201d The majority reasoned that the Court\u2019s decision in Goodyear\u2019s<\/em> stood only for the proposition that a \u201ccompound of generic elements is generic if the combination yields no additional meaning to consumers<\/em> capable of distinguishing the goods or services.\u201d Thus, the majority held that a consumer could understand \u201cBooking.com\u201d to refer to the source of the goods or services and not merely to describe the website itself.<\/p>\n

Addressing the anticompetitive arguments raised by the USPTO, the majority noted that the concern of hindering competitors \u201cattends any descriptive mark\u201d and that the likelihood of confusion and fair use doctrines would \u201cguard against the anticompetitive effects.\u201d Further, the majority rejected the USPTO\u2019s argument that unfair competition laws could provide an adequate remedy for Booking.com, stating that there is \u201cno cause to deny Booking.com the same benefits Congress accorded other marks qualifying as nongeneric.\u201d Lastly, the majority declined to \u201copen the door to cancellation of scores of currently registered marks\u201d due to the inconsistency of the USPTO\u2019s own application of the per se rule for which it argued.<\/p>\n

In her brief concurrence, Justice Sotomayor raised two observations. First, she noted her appreciation for the dissent\u2019s skepticism of consumer-survey evidence as an \u201cunreliable indicator of genericness.\u201d Second, she observed that the USPTO may have properly \u201cconcluded based on such dictionary and usage evidence, that Booking.com is in fact generic\u201d and that the district court may have erred in concluding otherwise\u2014an issue that was not before the Supreme Court.<\/p>\n

In his dissent, Justice Breyer argued in favor of the USPTO\u2019s per se rule, stating that the Lanham Act had not repudiated Goodyear\u2019s <\/em>and that its \u201cprinciple is sound as a matter of law and logic.\u201d In addition to tracing many of the same arguments advanced by the USPTO in its briefs, Justice Breyer criticized the \u201cfact-specific\u201d approach established by the majority to determine genericism. He claimed that survey evidence is an unreliable metric of genericness and that there would be little to stop the registration of countless generic marks. Justice Breyer argued that this influx of \u201cgeneric.com\u201d marks would open the door to potentially serious anticompetitive consequences, and he contended that the Court\u2019s decision may lead to costly litigation that will \u201cno doubt chill others from using variants on the registered mark and privilege established firms over new entrants to the market.\u201d<\/p>\n

While the ultimate consequences are not yet known, this decision clearly marks the strong resolution of the Supreme Court that, where genericism is concerned, consumer perception is key.<\/p>\n","protected":false},"excerpt":{"rendered":"

The following post comes from Ryan Reynolds, a rising 3L at Scalia Law and a Research Assistant at CPIP. By Ryan Reynolds Last week, the Supreme Court in USPTO v. Booking.com held that a combination of an otherwise generic term and a generic top-level domain (TLD) may be protected as a trademark so long as […]<\/p>\n","protected":false},"author":3627,"featured_media":0,"comment_status":"closed","ping_status":"closed","sticky":false,"template":"","format":"standard","meta":{"_monsterinsights_skip_tracking":false,"_monsterinsights_sitenote_active":false,"_monsterinsights_sitenote_note":"","_monsterinsights_sitenote_category":0,"_jetpack_memberships_contains_paid_content":false,"footnotes":""},"categories":[53],"tags":[217,421,597,818,820,825,863,1417,1475,1527],"class_list":["post-7630","post","type-post","status-publish","format-standard","hentry","category-trademarks","tag-booking-com","tag-descriptive-mark","tag-generic-mark","tag-justice-breyer","tag-justice-ginsburg","tag-justice-sotomayor","tag-lanham-act","tag-supreme-court","tag-trademark","tag-uspto"],"jetpack_featured_media_url":"","jetpack_sharing_enabled":true,"_links":{"self":[{"href":"https:\/\/blogs.uakron.edu\/ualawip\/wp-json\/wp\/v2\/posts\/7630","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/blogs.uakron.edu\/ualawip\/wp-json\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/blogs.uakron.edu\/ualawip\/wp-json\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/blogs.uakron.edu\/ualawip\/wp-json\/wp\/v2\/users\/3627"}],"replies":[{"embeddable":true,"href":"https:\/\/blogs.uakron.edu\/ualawip\/wp-json\/wp\/v2\/comments?post=7630"}],"version-history":[{"count":1,"href":"https:\/\/blogs.uakron.edu\/ualawip\/wp-json\/wp\/v2\/posts\/7630\/revisions"}],"predecessor-version":[{"id":15683,"href":"https:\/\/blogs.uakron.edu\/ualawip\/wp-json\/wp\/v2\/posts\/7630\/revisions\/15683"}],"wp:attachment":[{"href":"https:\/\/blogs.uakron.edu\/ualawip\/wp-json\/wp\/v2\/media?parent=7630"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/blogs.uakron.edu\/ualawip\/wp-json\/wp\/v2\/categories?post=7630"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/blogs.uakron.edu\/ualawip\/wp-json\/wp\/v2\/tags?post=7630"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}