On 30 June 2020, the Supreme Court of the United States (Supreme Court) handed down its decision in United States Patent And Trademark Office, Et. Al, Petitioners v. Booking.Com B.V.
This decision considers whether booking.com is protectable as a trade mark in the United States.
The United States Patent and Trademark Office (USPTO), who had rejected the trade mark application for booking.com, argued that booking.com is a generic name for online hotel-reservation services and that, as a rule, combining a generic term like “booking” with “.com” yields a generic composite which is not protectable as a trade mark. The USPTO calls this the “per se” rule. Booking.com B.V. argued that booking.com is not a generic term and that it should receive protection.
The case worked its way from the USPTO to the District Court where the District Court determined that booking.com is not generic. The Court of Appeal then affirmed the decision, finding no error in the District Court’s decision. The Court of Appeal also rejected the USPTO’s contention that combining a generic term with “.com” yields a generic result. Below we set out what happened when the case made its way to the Supreme Court.
What did the court find?
The majority of the Supreme Court (in an 8-1 decision) rejected the USPTO’s “sweeping rule” that the combination of a generic word and “.com” is generic. The Supreme Court found that booking.com is not seen by consumers to signify online hotel-reservation services as a class. Consumers do not perceive booking.com to be a generic name and therefore it is capable of protection.
The Supreme Court provided a detailed analysis on what makes a trade mark eligible for registration. Prime among the conditions for registration, the mark must be one “by which the goods of the applicant may be distinguished from the goods of others.” They say that “to be placed on the principal register, descriptive terms must achieve significance ‘in the minds of the public’ as identifying the applicant’s goods or services—a quality called ‘acquired distinctiveness’ or ‘secondary meaning.’”
The Supreme Court considers a number of other marks which fall into this category. They say that the USPTO’s own past practice appears to reflect the position that generic terms with the addition of “.com” are capable of registration. They cite ART.COM which is a registered trade mark covering “online retail store services” offering art prints, original art and art reproductions. They also cite DATING.COM registered for “dating services”.
In rejecting the USPTO’s argument, the Supreme Court found that the USPTO’s concerns around generic trade marks do not require a categorical rule against generic terms. There are already protections in place to ensure that owners of generic marks do not have a monopoly over the generic terms (e.g. what is known in the U.S. as the classic fair use doctrine which protects anyone who uses a descriptive term “fairly and in good faith” to describe their own goods).
In dissent, Justice Breyer argued that there is a basic principle in trade mark law that generic terms are ineligible for trade mark protection. Breyer J set out that using the majority’s reasoning many businesses could obtain a trade mark by simply adding “.com” to the name of their generic product – like pizza.com or flowers.com.
What are the implications?
This decision makes it clear that:
- There is no overarching rule that combining a generic word with “.com” makes a generic mark; and
- Whether a term is generic depends on its meaning to consumers.
What about in Australia?
Australian courts have adopted a similar approach in assessing domain name trade marks to that used by Supreme Court in Booking.com. In the 2013 decision of REA Group Ltd v Real Estate 1 Ltd, REA Group, owner of realestate.com.au and the corresponding trade mark, successfully claimed against Real Estate 1 Ltd on grounds that realestate1.com.au infringed REA Group’s trade mark. As part of his reasoning in determining the similarity between the domain and realestate.com.au mark, Bromberg J held that:
- in the context of an internet address, the terms “www” and “com.au” do not ordinarily serve the function of providing cues to brand or product identity; but
- the terms “www” and “com.au” can form part of a distinct trade mark where a trade mark incorporates the accoutrements of a domain name as cues to a product or brand’s identity, rather than cues to an address.
REA Group Ltd was applied in Telstra Corporation Ltd & Anor v Phone Directories Company Australia Pty Ltd & Ors, which recognised that there is no hard and fast rule concerning the significance of a domain name suffix, and that significance will depend on the trade mark and domain name in question. In Phone Directories, the Full Court of the Federal Court held that Phone Directories’ mark, “yellowbook.com.au”, could not be registered as a trade mark due to its similarity to Telstra’s existing “YELLOW” and “Yellow Pages” marks. This was in part due to the accoutrements not adequately distinguishing the “yellowbook.com.au” mark from Telstra’ s existing marks, as unlike “realestate.com.au” there was not a distinct brand presence associated with the use of the accoutrements.
Consistent with this reasoning, IP Australia has accepted a number of “generic.com” marks as part of the trade mark register. This notably includes “Booking.com”, which is a registered word mark in Australia.
#trademark – a new trend?
IP Australia has published guidance in respect of another brand identifier – the hashtag. The guidance page (available here) provides that, in most cases, the content that follows the # symbol will be considered the registerable mark and that the # symbol is not itself sufficient to distinguish a mark that would otherwise not be acceptable. This means that addition of a # symbol, similar to “.com” accoutrements, will not itself overcome instances of similarity or descriptive terms.
IP Australia does, however, recognise that where a “#trademark” becomes so recognised by consumers that the use as-a-whole becomes a brand identifier, there are grounds for mark registration. This provides scope for “#trademarks” to develop over time, similar to the “generic.com” marks.
 (2013) 217 FCR 327
 (2015) 237 FCR 388