The Supreme Court Case of USPTO v. Booking.com is just about everything that is exciting about trademark law. While copyright law has paired with telecommunications and patent law to be at the forefront of the interface of how law evolves to meet society’s needs as technology advances, this case reminds us that trademark law is never too far away from its siblings.
It is almost perfect that this case is the first case that is heard by teleconference. The reason for the change in structure is entirely unrelated to the case, but few cases in the history of the Supreme Court (on the subject of telecommunications or copyright law) could have been more fitting for the occasion. This is a case about interpreting a 19th century precedent and a 20th century statute when evaluating domain name of an e-commerce website as a candidate for trademark registration.
BOOKING.COM: PROBABLY A WEBSITE WHERE ONE DOES BOOKING.
The core question of the case is whether “Booking.com” is eligible for trademark registration. The USPTO rejected the application to register the trademark on the grounds that it is generic. In order to be registered as a trademark, the USPTO must conclude that a trademark is more than merely descriptive of a good or service. The USPTO found that “Booking.com” was a generic term for a website that one might go to in order to “book” reservations; the trademark merely described exactly what the service was, and therefore the application was rejected. Booking.com fought this, and the case made its way to the Supreme Court.
Now the trademark world waits to see if there will be a new ruling regarding the use of top-level domain indicators in trademarks.
The USPTO relies on the 1888 case about rubber manufacturer Goodyear, and the effort of that company to prevent other companies from using “Rubber Manufacturer” in their names. Booking.com argues that this case is superceded by a more recent Federal statute, and relies on the interpretation of the Lanham Act test for determining generic marks, the primary significance test, found in section 1064(3), according to Prof. John Duffy.
In a year in which most of the world has been turned upside down, the world of US trademark law has also been flipped by a few rulings. The 9th Circuit has issued a ruling in VIP Products LLC v Jack Daniel’s Properties Inc. on tarnishment that, some argue, departs from previous understandings about that doctrine. Only a few months later, the same Circuit Court handed down a ruling in San Diego Comic Con v Dan Farr Productions that raised concerns
The ruling of the Court of Appeals for the Federal Circuit in In re Forney Industries is already seen as a direct rejection of a 1995 Supreme Court ruling (Qualitex Co. v Jacobson Products Co.) on the guidance for registration of color marks. Almost exactly one year ago, in Iancu v Brunetti, the Supreme Court overruled the statutory rule that offensive or immoral marks were not eligible for registration. Only two years before that, in the 2017 case Matal v Tam, the Supreme Court ruled that disparaging marks could be eligible for registration. Now, the Supreme Court has another opportunity to rule on trademark law. It is tempting to look to the previous two decisions to predict the ruling on Booking.com, but those opinions are probably not much help.
The Supreme Court turned to the treasured First Amendment when evaluating the last two trademark law cases. The issues in those cases emerged out of questions about trademark registrations, but the Supreme Court saw them as issues of free speech and constitutional law. This time, the Bill of Rights will provide no guidance on a narrow point of substantive trademark law: is the mark “Booking.com” generic or not? Surely, the Court must answer “Yes” or “No” and clearly establish a rule regarding the status of “.com” and whether two generic components can make a non-generic trademark! Well, the Supreme Court may find a way to avoid addressing the issue quite so directly.
Many attorneys are likely to see this as a case of trademark law. However, the Supreme Court may see it as a question of whether a 19th century US Supreme Court case ought to hold precedent over a 20th century Federal statute: Booking.com has argued that the mark should be evaluated according to the Lanham Act, while the USPTO maintains that the 1888 Supreme Court ruling in Goodyear Rubber Co. v. Goodyear’s Rubber Mfg. Co. justifies rejection of the application.
It is important for the Supreme Court to address questions of administrative law and set a clear general course for the interpretation of laws in the United States. However, the Supreme Court has shown that it can address substantive questions of material fact in questions of intellectual property protections issued by the USPTO: six years ago, in Alice v CLS Bank, the Court explicitly commented on the technology and substantive concepts at issue, and held that merely using a computer as a tool to carry out the concept of escrow could not be protected by patent. It would be consistent with that opinion to attend to the substantive question of whether “Booking.com” is a generic mark, rather than ignoring the issue in favor of broadly interpreting the function of Common Law in the United States.
RULING ON DOTCOM-GENERICISM IN A DOTCOM WORLD
Although it is an accident forced by the conditions of a national emergency and a global pandemic, the fact that the Supreme Court held argument by teleconference is relevant to this case. For me, it is actually dispositive insofar as it demonstrates in the most unignorable fashion that digital technology is ubiquitous and inescapable in US law and commerce. If the true heart of this case is the assertion that the suffix “.com” adds something meaningful and not generic to a mark, that assertion drops dead at the moment a court is held in a digital environment to evaluate that assertion. The term “.com” is perhaps the most general, generic indication of an online presence. It is the digital equivalent of “Street” or “Avenue” and does nothing more than indicate address. If the addition of “.com” is nothing more than generic, and if “Booking” is also generic, the Court could only rule in favor of Booking.com with the claim that two generic components create more than a generic trademark.
IMPLICATIONS FOR A RULING IN FAVOR OF BOOKING.COM
Perhaps more important than whether the Supreme Court upholds or remands is exactly how the opinion is worded. Will the Court explicitly rule on the use of “.com” or other TLD appendages? Will the Court promulgate a broad rule about generic trademarks? I think it will not be enough for the Court to merely declare that the Lanham Act overrules the 1888 Goodyear case; I do not think the “Booking.com” mark is eligible for registration under either the Goodyear case or the Lanham Act. I do not think “Booking.com” can pass the “primary significance test.” Moreover, section 1064(3) is specifically referring to cancellation of marks already registered that become generic after registration. If “Booking.com” is a generic mark, it isn’t because the company has so thoroughly dominated the market that all consumers only identify that service with that name—it’s because consumers have a vague idea of what the word “booking” usually means, and they also have an idea of what “.com” entails.
I am not sure why the mark could not be placed on the supplemental register and then Booking.com can demonstrate acquired distinctiveness; as I understand it, the litigation has been replete with consumer surveys that should be sufficient to demonstrate acquired distinctiveness.
A viewer of a discussion on this subject raised a concern about the possible failure of Booking.com to maintain its domain name. The disconnect between owning the domain and owning the mark presents further complications to the business decision. Even if Booking.com wins, it would be prescient to pause and consider carefully whether a company should register its domain name as a trademark, even if the Supreme Court ruling would appear to allow it.