Supreme Court Puts Consumer Impressions First and Foremost in “Booking.com” Trademark Registration Dispute - Fordham Intellectual Property, Media & Entertainment Law Journal
26955
post-template-default,single,single-post,postid-26955,single-format-standard,ajax_fade,page_not_loaded,,select-theme-ver-3.3,wpb-js-composer js-comp-ver-6.4.1,vc_responsive
 

Supreme Court Puts Consumer Impressions First and Foremost in “Booking.com” Trademark Registration Dispute

Supreme Court Puts Consumer Impressions First and Foremost in “Booking.com” Trademark Registration Dispute

In June of 2020, the Supreme Court issued its ruling in USPTO v. Booking.com, holding that a generic term, when combined with an internet domain identifier like “.com” may be registered as a trademark under certain circumstances.1 The Court’s ruling relied heavily on the impressions a mark makes in the minds of consumers in justifying the registration of “Booking.com.”2

The case arose when the United States Patent and Trademark Office (“USPTO”) refused to register Booking.com’s moniker for trademark protection, claiming it was a generic term.3 It is a principal tenet of trademark law, and a matter undisputed in Booking.com,4 that a generic term—one that denotes a class of services or products—is generally ineligible for trademark registration.5 The USPTO urged the Court to adopt a broad rule that adding an internet domain suffix like “.com” to a generic term like “booking” does not alter the term’s generic nature.6 This proposed rule, the USPTO argued, was no different than the Court’s holding in Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co. that adding a corporate designation like “Company” to a generic term does not make an otherwise ineligible phrase eligible for registration.7 The Court ultimately rejected the USPTO’s argument for three reasons.

First, the Court determined that “Booking.com” is not a generic term.8 Although the Court relied on several factors in making this determination, it relied most significantly on the meaning “Booking.com” has in the minds of consumers.9 Relying on survey results, the Court noted that consumers generally do not view “Booking.com” as denoting class of services, but as a distinctive source of travel booking services.10

Second, the Court declined to adopt a per se rule that a generic term plus “.com” is ineligible for registration, noting the USPTO had previously granted registration to dozens of such marks.11 Adopting such a rule would have put previously registered marks such as “Art.com” and “Dating.com” at risk for cancellation.12

Lastly, the Court rejected the USPTO’s attempt to liken this matter to the issues at play in Goodyear.13 Unlike a corporate designation, which merely denotes an entity’s structure, the Court noted that “.com” “might also convey to consumers a source-identifying characteristic: an association with a particular website.”14 Here, again, the Court noted the importance of the mark’s meaning within the minds of consumers.15

Not only does the ruling in Booking.com have significant implications for companies who are recognizable by their domain names, but it may have broader implications for how generic terms are treated for trademark registration. Courts have historically applied the “de facto secondary meaning doctrine” to generic terms.16 Under this doctrine, a generic term that gains secondary meaning in the minds of consumers remains ineligible for registration, despite this acquired meaning.17 Hugh Hansen, Professor of Law and Founder, Director of the Fordham Intellectual Property Law Institute, states that this case could be “the beginning of the end for the ‘de facto secondary meaning doctrine,’” noting that “[it] makes no sense to apply if one is concerned about consumers and the public.”18 Although the Court did not evaluate whether “Booking.com” was at one point a generic term,19 the Court’s repeated emphasis on the importance of the meaning of “Booking.com” in the minds of consumers may imply that the doctrine is falling out of favor, potentially providing a new path for registering generic marks.


  1. 140 S.Ct. 2298, 2307 (2020).

  2. Id.

  3. Id.

  4. Id. at 2304

  5. See Restatement (Third) of Unfair Competition § 15 (Am. Law Inst. 1995).

  6. Booking.com, 140 S.Ct. at 2305.

  7. 128 U.S. 598, 602 (1888).

  8. Booking.com, 140 S.Ct. at 2305.

  9. Id.

  10. Id. at 2305–07.

  11. Id. at 2305.

  12. Id.

  13. Id. at 2305–06.

  14. Id. at 2306.

  15. Id.

  16. See J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 12.46 (5th ed. 2020).

  17. Marc C. Levy, From Genericism to Trademark Significance: Deconstructing the De Facto Secondary Meaning Doctrine, 95 Trademark Rep. 1197, 1198 (2006).

  18. E-mail from Hugh Hansen to author (Sept. 28, 2020, 12:21 EST) (on file with author).

  19. See Booking.com, 140 S.Ct. at 2305.

Rachel Winters

Rachel Winters is a third-year evening student at Fordham University School of Law, a staff member of the Intellectual Property, Media & Entertainment Law Journal, and a research assistant to Professor Olivier Sylvain. She is a Moot Court member, where she served on the Jessup bench team. In addition, she works full time as a paralegal and compliance officer at an investment management firm. She holds a B.A., with honors from SUNY Binghamton and an M.A. from The Ohio State University.