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United States Patent and Trademark Office v. Booking.com B.V.

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Supreme Court of the United States
United States Patent and Trademark Office v. Booking.com B.V.
Term: 2019
Important Dates
Argument: May 4, 2020
June 30, 2020
Outcome
Affirmed
Vote
8-1
Majority
Ruth Bader Ginsburg • Chief Justice John G. Roberts • Clarence Thomas • Samuel Alito • Sonia Sotomayor • Elena Kagan • Neil Gorsuch • Brett Kavanaugh
Concurring
Sonia Sotomayor
Dissenting
Stephen Breyer


United States Patent and Trademark Office v. Booking.com B.V. was argued before the Supreme Court of the United States on May 4, 2020, during the court's October 2019-2020 term. The case came on a writ of certiorari to the United States Court of Appeals for the 4th Circuit.

The case concerned federal trademark registration eligibility. The court affirmed the 4th Circuit's decision in an 8-1 ruling, holding a "generic.com" term is not a generic name for a class of goods or services if consumers do not recognize the term as generic. In those circumstances, "generic.com" (or, in this case, "Booking.com") is eligible for federal trademark registration.[1] Click here for more information.

Oral argument was initially scheduled for March 23, 2020. However, the U.S. Supreme Court announced on March 16 that it was postponing the 11 oral arguments originally scheduled during its March sitting. In a press release, the court said the delay was "in keeping with public health precautions recommended in response to COVID-19."[2] COVID-19 was the abbreviation for coronavirus disease 2019, caused by SARS-CoV-2. On April 15, the court announced it had rescheduled the case for May 4, 2020.

  • Click here for more information about the court's response to the coronavirus pandemic.
  • Click here for more information about political responses to the pandemic.
HIGHLIGHTS
  • The case: The U.S. Patent and Trademark Office (USPTO) denied Booking.com's four applications to trademark the name Booking.com. Booking.com appealed to the Trademark Trial and Appeal Board, which upheld the USPTO's rejection. On appeal, the U.S. District Court for the Eastern District of Virginia overturned the USPTO's rejection of two applications and remanded the case for the remaining two applications. The district court later amended its ruling to require Booking.com to pay attorneys fees for the USPTO. Both Booking.com and the USPTO appealed the district court's amended ruling. The 4th Circuit Court of Appeals affirmed the district court's decision. The USPTO petitioned the U.S. Supreme Court to review the case, arguing the circuit court's decision conflicted with rulings from the 9th Circuit and the Federal Circuit in similar cases.[3][4]
  • The issue: Whether the addition by an online business of a generic top-level domain (".com") to an otherwise generic term can create a protectable trademark.[5]
  • The outcome: The court affirmed the 4th Circuit's decision in an 8-1 ruling, holding a "generic.com" term is not a generic name for a class of goods or services if consumers do not recognize the term as generic. In those circumstances, "generic.com" (or, in this case, "Booking.com") is eligible for federal trademark registration.[1]


    • You can review the lower court's opinion here.

    Timeline

    The following timeline details key events in this case:

    • June 30, 2020: The U.S. Supreme Court affirmed the 4th Circuit Court of Appeals' decision in an 8-1 ruling.
    • May 4, 2020: Oral argument
    • March 16, 2020: The U.S. Supreme Court postponed its March sitting. Oral arguments in United States Patent and Trademark Office v. Booking.com B.V. were initially scheduled for March 23, 2020.
    • November 8, 2019: The U.S. Supreme Court agreed to hear the case.
    • July 5, 2019: The U.S. Patent and Trademark Office, the petitioner, filed a petition with the U.S. Supreme Court.
    • February 4, 2019: The 4th Circuit affirmed the ruling of the U.S. District Court for the Eastern District of Virginia.

    Background

    Booking.com, a website for booking travel and hotel accommodations, began using the name "Booking.com" in 2006. In 2011 and 2012, Booking.com filed four applications with the U.S. Patent and Trademark Office (USPTO) to trademark the name Booking.com. The USPTO denied the applications on the grounds that Booking.com was generic and not a protectable mark. Booking.com appealed to the Trademark Trial and Appeal Board (TTAB), which upheld the USPTO's decision.[3][6]

    In 2016, Booking.com appealed the TTAB's ruling in the U.S. District Court for the Eastern District of Virginia, arguing Booking.com was eligible for trademark protection. The district court affirmed in part Booking.com's motion for summary judgment, ordering the USPTO to accept two of the trademark applications, and remanded the case for further proceedings on the remaining two applications.[3]

    Following the district court's ruling, the USPTO filed two motions: (1) a motion to amend the court's order to remand all four trademark applications, rather than only two, and (2) a motion to require Booking.com to pay approximately $77,000 of USPTO's attorneys fees. The district court denied the motion to amend the order and granted the motion for payment of attorneys fees.[3]

    Both Booking.com and the USPTO appealed the district court's second ruling. The United States Court of Appeals for the 4th Circuit affirmed the district court's ruling and denied the government's petition for a rehearing en banc.[3][4]

    The USPTO petitioned the U.S. Supreme Court for review. In its petition, the government argued the 4th Circuit's ruling "conflicts with rulings of the Federal and Ninth Circuits, which have held that 'generic.com' names similar to BOOKING.COM are unprotectable as trademarks." The government also argued the 4th Circuit's decision "is likely to have serious and immediate anticompetitive effects."[4]

    Questions presented

    The petitioner presented the following questions to the court:

    Questions presented:
    • Whether the addition by an online business of a generic top-level domain (".com") to an otherwise generic term can create a protectable trademark.[5]

    Outcome

    The court affirmed the 4th Circuit's decision in an 8-1 ruling, holding a "generic.com" term is not a generic name for a class of goods or services if consumers do not recognize the term as generic. In those circumstances, "generic.com" (or, in this case, "Booking.com") is eligible for federal trademark registration.[1]

    Justice Ruth Bader Ginsburg delivered the opinion of the court. Justice Sonia Sotomayor filed a concurring opinion. Justice Stephen Breyer dissented.

    Opinion

    In her opinion, Justice Ginsburg rejected the USPTO's argument that "Booking.com" was ineligible for a trademark because its name was generic.[1]

    In her opinion, Justice Ginsburg wrote:

    “ A term styled “generic.com” is a generic name for a class of goods or services only if the term has that meaning to consumers. Consumers, according to lower court determinations uncontested here by the PTO, do not perceive the term “Booking.com” to signify online hotel-reservation services as a class. In circumstances like those this case presents, a “generic.com” term is not generic and can be eligible for federal trademark registration. ...


    Whether “Booking.com” is generic turns on whether that term, taken as a whole, signifies to consumers the class of online hotel-reservation services. Thus, if “Booking.com” were generic, we might expect consumers to understand Travelocity—another such service—to be a “Booking.com.” We might similarly expect that a consumer, searching for a trusted source of online hotel-reservation services, could ask a frequent traveler to name her favorite “Booking.com” provider. Consumers do not in fact perceive the term “Booking.com” that way. ... Because “Booking.com” is not a generic name to consumers, it is not generic. ...

    In the PTO’s view, which the dissent embraces, when a generic term is combined with a generic top-level domain like “.com,” the resulting combination is generic. ... The PTO’s own past practice appears to reflect no such comprehensive rule. ... Existing registrations inconsistent with the rule the PTO now advances would be at risk of cancellation if the PTO’s current view were to prevail. ...

    According to the PTO, adding “.com” to a generic term—like adding “Company”—“conveys no additional meaning that would distinguish [one provider’s] services from those of other providers.” ... That premise is faulty. A “generic.com” term might also convey to consumers a source-identifying characteristic: an association with a particular website. As the PTO and the dissent elsewhere acknowledge, only one entity can occupy a particular Internet domain name at a time, so “[a] consumer who is familiar with that aspect of the domain-name system can infer that BOOKING.COM refers to some specific entity.”

    While we reject the rule proffered by the PTO that “generic.com” terms are generic names, we do not embrace a rule automatically classifying such terms as nongeneric. Whether any given “generic.com” term is generic, we hold, depends on whether consumers in fact perceive that term as the name of a class or, instead, as a term capable of distinguishing among members of the class.[7]

    		”
    —Justice Ginsburg[1]

    Concurring opinion

    Justice Sotomayor filed a concurring opinion to add two observations: (1) consumer surveys can be an unreliable method to determine whether a term is generic, and (2) the USPTO may have properly concluded that "Booking.com" is generic based on dictionary and usage evidence, but that question was not before the court.[1]

    Dissenting opinion

    Justice Breyer filed a dissenting opinion, writing that the majority's opinion was "inconsistent with trademark principles and sound trademark policy."[1]

    Justice Breyer wrote:

    “ A generic term is not eligible for use as a trademark. That principle applies even if a particular generic term “ha[s] become identified with a first user” in the minds of the consuming public. CES Publishing Corp. v. St. Regis Publications, Inc., 531 F. 2d 11, 13 (CA2 1975) (Friendly, J.). The reason is simple. To hold otherwise “would grant the owner of the mark a monopoly, since a competitor could not describe his goods as what they are.” ... Where a compound term consists simply of a generic term plus a corporate designation, the whole is necessarily no greater than the sum of its parts.


    In my view, appending “.com” to a generic term ordinarily yields no meaning beyond that of its constituent parts. Because the term “Booking.com” is just such an ordinary “generic.com” term, in my view, it is not eligible for trademark registration. ... When combined with the generic name of a class of goods or services, “.com” conveys only that the owner operates a website related to such items.

    A generic term may suggest that it is associated with a specific entity. That does not render it nongeneric. ... “Booking, Inc.” may not be trademarked because it signifies only a booking company. The result should be no different for “Booking.com,” which signifies only a booking website.

    Granting trademark protection to “generic.com” marks threatens serious anticompetitive consequences in the online marketplace. ... Granting trademark protection to “generic.com” marks confers additional competitive benefits on their owners by allowing them to exclude others from using similar domain names. Federal registration would allow respondent to threaten trademark lawsuits against competitors using domains such as “Bookings.com,” “eBooking.com,” “Booker.com,” or “Bookit.com.” ...

    By making such terms eligible for trademark protection, I fear that today’s decision will lead to a proliferation of “generic.com” marks, granting their owners a monopoly over a zone of useful, easy-to-remember domains.[7]

    		”
    —Justice Breyer[1]

    Text of the opinion

    Read the full opinion here.

    Oral argument

    Audio

    Audio of oral argument:[8]



    Transcript

    See also

    External links

    Footnotes

    1. ↑ 1.0 1.1 1.2 1.3 1.4 1.5 1.6 1.7 Supreme Court of the United States, United States Patent and Trademark Office v. Booking.com B. V., decided June 30, 2020
    2. ↑ U.S. Supreme Court, "Press release from March 16, 2020," accessed March 16, 2020
    3. ↑ 3.0 3.1 3.2 3.3 3.4 United States Court of Appeals for the 4th Circuit, Booking.com B.V. v. United States Patent and Trademark Office, decided February 4, 2019
    4. ↑ 4.0 4.1 4.2 Cite error: Invalid <ref> tag; no text was provided for refs named petition
    5. ↑ 5.0 5.1 Supreme Court of the United States, "Questions presented: United States Patent and Trademark Office v. Booking.com B.V.," accessed November 11, 2019
    6. ↑ Supreme Court of the United States, Petition for a writ of certiorari, United States Patent and Trademark Office v. Booking.com B.V.," accessed November 11, 2019
    7. ↑ 7.0 7.1 Note: This text is quoted verbatim from the original source. Any inconsistencies are attributable to the original source.
    8. ↑ Supreme Court of the United States, "Oral Argument - Audio," accessed May 11, 2020
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