Francesca Masella is a J.D. candidate, 2021 at NYU School of Law.
Trademark law serves to protect against consumer confusion as to the source of a product. It does so by granting producers the exclusive right to use a mark in commerce. However, granting exclusive rights has a limit: producers will not receive protection for using words that represent their ordinary meaning. In other words, a producer of potato chips will not be granted the exclusive right to market their product under the mark “Potato Chips,” because this would prevent other potato chip manufacturers from being able to effectively compete in the marketplace. In this regard, trademark law is seen as a tool to ensure fair competition.
Generic terms, which are defined as common names of products, are deemed to be unprotectable for this reason. The Potato Chip illustration above serves as an example. A term deemed to be descriptive of the product branded with the term can be protected only upon a showing of secondary meaning—that is by showing that the general consuming public has come to associate that term exclusively with a single seller. Suggestive, Arbitrary, and Fanciful terms are deemed to be “inherently distinctive” and can be registered without a showing of secondary meaning.
The line between generic and descriptive terms is a fuzzy one, but one that is of great importance to producers, since it is one they must pass to have any chance at receiving trademark protection. Booking.com is a company currently grappling with just how important and fuzzy that boundary is.
If you were to ask a friend who recently traveled somewhere around the world how they reserved their hotel and airfare, chances are they might tell you they looked for the cheapest options on websites such as Expedia.com, Kayak.com, or Booking.com. Booking.com, for one, has operated their website since 2006. In 2011, it filed trademark registration applications for use of the term “BOOKING.COM” for Class 43 services, which include hotel reservation services. The USPTO, however, decided to reject the application, on the grounds that the term “Booking.com” was generic when applied to the services housed under Class 43. The TTAB affirmed that decision, on the grounds that both “booking” and “.com” are generic terms, the latter used to indicate a consumer website. The company appealed to the district court claiming the term is at minimum descriptive, with the general consuming public having come to identify the term with a single brand, or distinctive in itself, and that either way it should be granted protection. The district court sided with Booking.com, and the 4th Circuit affirmed, but not before addressing an interesting nuance to this case.
Everyone with even the slightest understanding of how Internet functions knows that any URL is linked to only one webpage. You know that when you type ‘facebook.com’ into Google, you will be brought to the login screen of the popular social media network. By that same logic, a consumer knows that typing “Booking.com” into Google will lead them to the same webpage, time after time, which is presumably run by a single company that owns that website. This begs the question of whether any particular website address has some quality of “distinctiveness,” at least in the lay sense of the word.
The USPTO argued to the 4th Circuit that adding a top-level domain name to a generic term never renders the term non-generic. It relied in part on the holding of Goodyear’s Rubber Mfg. Co. v. Goodyear Rubber Co., 128 U.S. 598 (1888) in which the Court held that adding a commercial indicator like “Company” to a generic term does not render the term trademarkable. According to the USPTO, the “.com” added on to the term “booking” is an analogous situation. The 4th Circuit, however, rejected this argument because the case was decided before the Lanham Act was passed and because other circuits have not adopted the bright-line rule. However, the court made note that the opposite bright-line rule was also inappropriate: that adding a top-level domain like .com also does not necessarily render the name non-generic. The key issue, according to the 4th Circuit, is whether the consuming public perceives the compound term as a whole to be an indicator of source.
The U.S. Supreme Court is about to weigh in on this very issue because the USPTO petitioned for certiorari on the issue of “whether the addition by an online business of a generic top-level domain (“.com”) to an otherwise generic term can create a protectable trademark.” Certiorari was granted on November 8, 2019, with the Court probably hearing the case this upcoming spring. A very general decision by the Court in either direction could have a profound effect on trademark law. Ruling for a bright-line rule in favor of Booking.com—that adding the .com to a generic term renders it per se non-generic—has the potential to open a loophole in the long-standing theory of trademark law that generic marks cannot be protected. On the other hand, the average internet-literate person might support this conclusion and say that adding a top-level domain to a generic word gives the term some sort of distinctiveness in the lay sense, and that should be enough to render the term protectable. The Court, however, might decide to sidestep the issue and avoid a bright-line rule altogether by narrowly deciding on Booking.com’s registration specifically and finding refuge in the fuzzy (and flexible) generic versus descriptive boundary.