I. INTRODUCTION:

On June 30, 2020, the Supreme Court of the United States (‘SCOTUS’) delivered its judgment, with a vote of 8-1, in the case of United States Patent and Trademark Office, et.al. v. Booking.com B.V.[1], wherein the opinion of the majority was filed by Justice Ruth Bader Ginsburg; Justice Sonia Sotomayor filed concurring opinion, and Justice Stephen Gerald Breyer filed the lone dissenting opinion.

II. FACTUAL MATRIX AND PROCEDURAL POSTURE:

USPTO and PTAB: Booking.com is a company engaged in offering hotel and travel reservation services through the website[2] of the same name. It had applied to the United Stated Patent and Trademark Office (‘USPTO’) for the registration of four (4) trademarks[3] consisting of the term “Booking.com” with different features. USPTO, while holding that the mark “Booking.com” is generic for online reservation service, refused the registration of the said mark. Booking.com appealed with the Trademark’s Trial and Appellate Board (‘Appeal Board’) against the refusal of registration by the USPTO. The Appeal Board, while rejecting the appeal, opined that: (i) “Booking.com” is a generic term; (ii) “Booking” means a travel reservation and “.com” means a commercial website, and that the consumer would understand that the term refers to portal offering travel reservation services; and (iii) even assuming the “Booking.com” is descriptive, and not generic, it is ineligible for registration for lacking secondary meaning.

Trial and Appeal: Booking.com preferred a review of the order of Appeal Board before the U.S. District Court for Eastern District of Virginia (‘District Court’). Pursuant to the evidence offered by Booking.com pertaining to consumer perception, the District Court, concluded that the term “Booking.com” is not generic in the eye of the relevant consumer as they primarily understand “Booking.com” as reservation services offered at that particular domain name. The District Court, however, opined that Booking.com’s marks are distinctive and have acquired secondary meaning, and therefore, have met the requirement for registration. USPTO appealed against the District Court’s decision before the U.S. Court of Appeals for the 4^th Circuit (‘Court of Appeals’). The Court of Appeals, while confirming that decision[4] of the District Court, rejected the contention of USPTO that combination of generic term with “.com” is generic too. USPTO, preferred a Petition seeking grant of Writ of Certiorari, before the SCOTUS to review the decision of the Court of Appeals.[5] SCOTUS granted certiorari in the year 2019, and the oral arguments in the review was heard by the Court in May, 2020.

III. MAJORITY OPINION OF SCOTUS:

1. Before deciding the issues raised in the Petition arising from the order of the Court of Appeals, the SCOTUS undertakes a very engaging discussion on the law pertaining to registration of a trademark; specifically, a mark that is less distinctive. In its decision, the SCOTUS observed that distinctiveness is offered in increasing scale of being: (i) generic; (ii) descriptive; (iii) suggestive; (iv) arbitrary; and (iv) fanciful; and in that order, and that the more distinctive the mark is, the more it becomes eligible for registration in the principal register. It further observed that descriptive terms must necessarily achieve either acquired distinctiveness or secondary meaning to be placed in the principal register. SCOTUS further observed that generic terms per se are ineligible for protection as a trademark. Citing various sources, SCOTUS elicited the following guidelines for deciding whether a term is generic: (i) generic terms means class of goods or services rather than a particular feature or exemplification of the class; (ii) a compound terms meaning as a whole mark must be considered testing its distinctiveness; and (iii) the relevant meaning of the term is its meaning to the relevant consumer. Basis the aforesaid principles, the SCOTUS examined whether if “Booking.com” was a generic mark depended on whether; if taken as a whole, the relevant consumer would perceive the terms as a class of online hostel-reservation services.
   
2. Pertinently USPTO challenged the decision of the Court of Appeals on the sole ground that a combination of a generic term with “.com” would be generic too i.e. “generic.com” term is generic. USPTO argued that “Booking.com” is ineligible for registration dehors any favourable evidence on consumer perception. The SCOTUS, however, did not agree with this per se exclusionary rule of the USPTO, as the past practices of USPTO did not embrace such rule. The SCOTUS relied on the registration of “Art.com” and “Dating.com”, and stated that the aforestated contention of the USPTO does not find support in law and policy. Thereafter, the SCOTUS answered the in the following, the arguments of the USPTO which were raised in support of its ground:

• Goodyear’s Rubber Company: USPTO relied on the case of Goodyear’s Rubber Glove Mfg. Co. v. Goodyear Rubber Co.[6], wherein the SCOTUS had opined that a combination of generic corporate designation and a generic term does not make the term eligible for registration as a trademark. In the present case, SCOTUS distinguished Goodyear on facts. The term “Goodyear Rubber”, back then, referred to goods produced by Goodyear’s invention process, and the term “Company” indicated the nature of association of parties to deal with such goods. However, “generic.com” would enable the relevant consumers to identify the source of goods or services emanating from a particular website. Further, since only one entity can own a particular domain name,  a consumer can, therefore, almost always identify that “Booking.com” refers to some specific entity. SCOTUS, therefore, rejected the contention of the USPTO that “generic.com” terms signify an entire class of online goods or services. SCOTUS found the arguments of USPTO based on Goodyear that “Generic Company” terms are – as a matter of law, ineligible for registration as trademark dehors the consumer perception of the term, as faulty, because whether or not a term is generic, would depend on the perception of the consumer. SCOTUS opined that USPTO’s only basis for contending “generic.com” is generic is its misplaced reliance on Goodyear. SCOTUS while rejecting the arguments of USPTO that “generic.com” is generic, has also cautioned that the same need not mean that the “generic.com” terms are automatically classified as non-generic. SCOTUS has categorically opined that whether or not if “generic.com” is generic would depend on whether the consumer perceives it as a name of a class or distinguishing between the members of the class. In this regard, it is pertinent to state that the USPTO did not contest the determination of the District Court that the relevant consumers perceive “Booking.com” as a class of online hotel-reservation services.
  
• Hindrance to competition: USPTO feared that permitting registration of “Booking.com” would prevent competitors from using “booking” or the domain names like “ebooking.com” etc. SCOTUS opined that aforestated concerns of USPTO are common for any descriptive mark. It further opined that the competitor’s use of a descriptive mark does not amount to infringement unless it is likely to confuse, and even if it confuses, such competitor is protected by the doctrine of classic fair use. Additionally, Booking.com acknowledged that its registration would not prevent competitors from using the term “booking” to describe their services. In view of foregoing reasons, the SCOTUS rejected the concern of the USPTO that the registration would hinder the competition.
  
• generic.com does not require trademark protection: USPTO contended that owners of generic.com brand may not need trademark protection as they have already registered a domain in the same name which others cannot use. SCOTUS rejected this contention by holding that such competitive advantages, however, do not disqualify the registration of the mark.
  
• Protection under unfair-competition law: USPTO urged that even if the “Booking.com” is generic, it has the protection from unfair-competition law against passing-off by third-parties. SCOTUS, rejecting this argument of USPTO, opined that trademark law grants wider protection to Booking.com than the ones available under unfair-competition law, and the same may not be denied to Booking.com.
  

IV. CONCURRING OPINION:

Justice Sonia Sotomayor, concurring with the opinion of the majority, wrote a separate opinion stating that USPTO may have challenged the determination of District Court and argued based on dictionary and usage evidence that Booking.com is generic term for the class of services at issue, however, it did not.

V. DISSENTING OPINION:

Justice Stephen Gerald Breyer filed the sole dissenting opinion in the case. His opinion stated that “Booking.com” is a combination of generic term “booking” and top-level domain name “.com”. Appending “.com” to a generic term ordinarily does not add meaning beyond the constituent parts, and therefore, “Booking.com” is not eligible for trademark registration. Justice Breyer did not agree with the contention of Booking.com that 1946 Lanham Act repudiated SCOTUS’ decision in Goodyear, and opined that the principle laid down in Goodyear is sound as matter of law. Justice Breyer further opined that similar to corporate designation, that was the issue in Goodyear, the “.com” does not have capacity to identify the source of goods or services.

VI. OUR VIEWS:

Trademark protection is granted for a term to enable the relevant consumers to distinguish between the market variants. Therefore, the consumer perception must be the deciding factor in ascertaining the distinctiveness of a term including whether or not the same is generic. The SCOTUS has rightly applied the test of consumer perception of the whole mark as the basis to determine “Booking.com” as descriptive and not generic. Further, the argument of USPTO to embrace a per se exclusionary rule dehors the consumer perception goes against the fundamentals of the trademark jurisprudence, and was rightly rejected by the SCOTUS. Reliance on the unique feature of the internet domain name viz. association of a domain name with one entity, to strengthen the argument that “generic.com” need not necessarily be generic, shows that the SCOTUS has considered a consumer perception on the internet different from that of the brick and mortar world.

[1] https://www.supremecourt.gov/opinions/19pdf/19-46_8n59.pdf

[2] www.booking.com

[3] Serial No. 85485097, Serial No. 79114998, Serial No. 79122365, and Serial No. 79122366

[4] Booking.com B.V. v. The United Stated Patent and Trademark Office No. 17-2458 & No. 17-2459, decided on February 04, 2019.

[5] “Parties who are not satisfied with the decision of a lower court must petition the U.S. Supreme Court to hear their case. The primary means to petition the court for review is to ask it to grant a writ of certiorari. This is a request that the Supreme Court order a lower court to send up the record of the case for review.” – https://www.uscourts.gov/about-federal-courts/educational-resources/about-educational-outreach/activity-resources/supreme-1

[6] 128 U.S. 598 (1888)