On Friday, November 8th, the Supreme Court of the United States granted certiorari to hear a case arising out of the Fourth Circuit. The case involves the trademarking of the namesake of the popular travel website, Booking.com and is aptly named United States Patent and Trademark Office v. Booking.com B.V.. The case is likely to be argued in the spring of 2020, and readers can expect a decision by late June.
Booking.com applied for a trademark to cover the complete name of its website – Booking.com. The U.S. Patent and Trademark Office (‘USPTO’) denied registration of the trademark under the authority of the Lanham Act. The Lanham Act and previous case law prohibits the trademarking of generic terms such as the terms “booking” or “.com” would be on their own. It is under this rule that the USPTO believes Booking.com is not a protectable trademark.
Of course, Booking.com disagrees and believes that their website name is unique and furthers their distinctive brand such that their customers have come to identify with the name. The travel site contends that the entire domain name – Booking.com – should be considered rather than each of the parts. They believe that when considering the entire domain name, the term is no longer generic, and is a protectable trademark. Trademarking their name is obviously in Booking.com’s interest and would offer some protection from competitors that might create domains piggybacking off of their brand.
Thus far, the courts have agreed with Booking.com. After exhausting internal appeals, the travel site appealed the USPTO’s decision to the Eastern District of Virginia by filing a complaint. The district court granted partial summary judgment in favor of Booking.com based on the USPTO’s failure to satisfy its burden of proving that the public only recognized Booking.com as general online hotel reservations, rather than specifically relating the domain name with the company. Therefore, the district court found the domain name to be a descriptive – rather than generic – mark and was therefore protectable as a trademark.
This holding was affirmed by the Fourth Circuit Court of Appeals, which found no error in the district court’s fact finding. The Circuit Court rejected both the idea that “.com” per se makes a trademark descriptive and trademarkable and the contrary idea that the addition of “.com” cannot bring a term out of generic classification. Rather than making a per se rule based on the inclusion of “.com”, the Circuit Court agreed with the district court and Booking.com that the question turns on whether evidence indicates the term as a whole is descriptive and consequently a protectable trademark.
In its opinion, the Fourth Circuit noted other cases that found simply adding “.com” to a term does not make the term non-generic. These cases included, among others, the likes of Advertising.com, Hotels.com, and Mattress.com. While the court noted these superficial holdings, it highlighted that these opinions left room for facially generic trademarks to be valid and protectable if supported by sufficient evidence that the public relates the term to a specific company. The court utilized this wiggle room in this rare occasion in which the USPTO put on no evidence to support the public having a generic view of the domain name.
The Supreme Court will have the final say as to whether Booking.com is a protectable trademark this coming spring. Although the doctrine seems sound, this narrow issue is relatively untouched. A critical issue will be review of the Circuit Court’s holding that the USPTO bears the burden of putting on evidence to support genericness, an issue that had not been addressed by the Fourth Circuit before this case. Readers should be on the lookout for the Supreme Court’s opinion on this issue and the rest of the Booking.com case next June. The result of the case has the potential to substantially affect the landscape of trademarking for domain names.
November 12, 2019