Faculty Opinion: More Generic.com Marks?

Author: Program on IP & Technology Law






More Generic.com marks? A spotlight on the U.S. Supreme Court’s recent decision in USPTO v. Booking.com


On Tuesday, June 30, the U.S. Supreme Court issued its opinion in United States Patent and Trademark Office v. Booking.com B. V.  Rejecting the PTO’s nearly per se rule that a generic term with a generic domain name suffix like .com always results in a generic combination, the Court held that generic.com is generic only if the composite term has that meaning to consumers. Consumer understanding is, for the Court, the bedrock principle of the Lanham Act.

In a majority opinion by Justice Ginsburg, the Court described Booking.com as “a digital travel company that provides hotel reservations and other services under the brand ‘Booking.com,’ which is also the domain name of its website.” Booking.com applied to register several different marks that contained “Booking.com,” and both the PTO’s Examining Attorney and Trademark Trial and Appeal Board concluded that “Booking.com” was generic for travel-related services. On appeal, the District Court rejected that conclusion, finding that the consuming public “primarily understands that Booking.com does not refer to a genus, [but] rather is descriptive of services involving ‘booking’ available at that domain name.” The Fourth Circuit agreed, rejecting the PTO’s rule that the combination of .com with a generic term like “booking” was necessarily generic.

The Supreme Court affirmed, clarifying that “whether ‘Booking.com’ is generic turns on whether that term, taken as a whole, “signifies to consumers the class of online hotel-reservation services.” Since, as the lower courts concluded, consumers do not in fact see Booking.com that way, it is not generic. According to the Court, generic.com is distinguishable from the “Generic Company” formulation, which the Court had previously held to be generic in the 1888 Goodyear decision. According to the majority, a generic.com term might also convey to consumers a source-identifying characteristic: an association with a particular website. As a result, “a consumer who is familiar with that aspect of a domain-name can infer that BOOKING.COM refers to some specific entity.” In this sense, .com is, according to the majority of the Court, not like Company: while a company can be anywhere and everywhere, “only one entity can occupy a particular Internet domain name at a time.” 

The Court dismissed concerns raised by the PTO and Justice Breyer in dissent that protecting generic.com terms would enable overzealous enforcement. According to the majority, while those terms could be registered, the resulting rights would be narrow, and the likelihood of confusion test and descriptive fair use defense would adequately “guard against anticompetitive affects…and prevent a monopoly.”

Professor Mark McKenna, the John P. Murphy Foundation Professor of Law at Notre Dame Law School and Founding Director of the Notre Dame Technology Ethics Center, co-authored an amicus brief in the case on behalf of several law professors. He commented on the decision on Twitter:

“Not surprisingly, the Court continues to be allergic to rules in the IP area. The Majority did what we all expected and rejected a per se rule that “generic.com” is generic. Evaluation depends entirely on consumer understanding of the mark as a whole.

The majority distinguishes Goodyear on the basis that no one thinks adding a corporate designator makes a difference, but owing to the exclusivity of the domain name system, they might think generic.com refers to a particular website. As Breyer points out in dissent, and Rebecca Tushnet [Professor at Harvard Law School] notes, that distinguishing feature will *always* be present for generic.com, which comes close to suggesting that domain names will always be trademarks.

The majority claims to avoid that result by requiring evidence in particular cases and by noting that we have to be careful with surveys, which might not adequately distinguish trademark meaning from understanding of the exclusivity of domain names.

In case the tension between those two things isn’t clear: simultaneously “generic.com” is different from “Generic Corp.” because people know domain names are exclusive, but also sometimes that exclusivity doesn’t count. [It] would have helped to have a lot more on de facto secondary meaning here, and we only get that from Breyer [in the dissent], who correctly notes that inability to distinguish [de facto secondary meaning and trademark significance] is a good reason for a rule here (and also to distrust surveys).

In the end, the majority opinion depends on its heroic assumption that likelihood of confusion and descriptive fair use can adequately limit the scope of rights for generic.com marks. That is, I think, wrong. And then there also cost, which is ignored. Because there aren’t very many of these that should be recognized as marks, and because scope won’t be limited appropriately, the game isn’t worth the candle. This decision will add considerable cost and uncertainty to the system.”