Intellectual Property

Dot Com Dilemma? gTLD Extensions And Testing The Boundaries Of Genericness

Can generic terms can shed their 'genericness' by the addition of a top-level domain and acquire secondary meaning over time? SCOTUS will decide.

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When it comes to trademarks, descriptiveness is not good thing.  It makes sense — when a term or phrase describes some ingredient, quality, or characteristic of the goods or services in question, it does not lend itself to being a source identifier.  When terms or phrases are so descriptive that they cannot function as a source identifier, then such terms or phrases are deemed “generic.”  For domain names that operate as trademarks, this begs the question: Can the addition of a generic top-level domain extension (such as .COM) to an otherwise generic term create a protectable trademark?  This seems to beg the question presented to SCOTUS in United States Patent and Trademark Office v. Booking.com B.V.

The facts here are quite simple. Amsterdam-based Booking.com (a division of Booking Holdings, Inc.) is a travel aggregator website operating as a metasearch engine for hotel reservations.  The website began using the name back in 2006 and began its journey for federal trademark protection in 2011.  To make a long story short, the United States Patent and Trademark Office (USPTO) rejected the applications claiming that the term “booking.com” was generic for hotel booking services.  For example, the USPTO did not mince words in its final Office Action refusing the trademark application Ser. No. 79122365, claiming that the addition of the .COM top-level domain to “the generic wording adds no source-identifying significance but retains only its significance as a TLD,” thereby failing to serve as a source identifier.  The refusal was affirmed on appeal to the Trademark Trial and Appeal Board, and the matter proceeded to the United States District Court for the Eastern District of Virginia.

This is where things get bit interesting — the district court sided with the company.  Although the district court recognized that “the term ‘booking’ is generic” for hotel reservation services, the district court held that top-level domains (such as “.COM”) “are generally source identifying and that a mark composed of a generic [second-level domain] and a [top-level domain] is a descriptive mark eligible for protection upon a showing of acquired distinctiveness.” Yep — the district court basically relied upon favorable survey evidence to conclude that the trademark had acquired secondary meaning.  The Fourth Circuit Court of Appeals affirmed the finding, and now SCOTUS has granted certiorari to hear the case.

This case is interesting because it goes to the heart of whether generic terms can shed their “genericness” by the addition of a top-level domain and acquire secondary meaning over time.  We are not talking about merely descriptive terms here that describe the nature, quality, ingredient, or other characteristic of the term for the class of goods or services that are not inherently distinctive but can, in some cases, acquire secondary meaning in the marketplace. Unlike such merely descriptive terms, generic terms go a step farther.  Generic terms are common names that an ordinary consumer understands primarily as describing the family (or “genus”) of the trademark applicant’s goods and/or services.  By definition, such terms cannot indicate the source of goods and/or services, and cannot qualify for federal trademark registration.  This makes sense — the terms “corn flakes” or “restaurant” describe a general type of goods or service, not whose goods or services from which they emanate.

So what gives here?  As evident from the petition for certiorari to SCOTUS, it seems that the Fourth Circuit “concluded that BOOKING.COM, taken as a whole, is not generic because the relevant public would primarily understand the term to indicate [Booking.com’s] brand… [relying] in significant part on [the] Teflon survey, rejecting the USPTO’s argument that such survey evidence is irrelevant to the question whether BOOKING.COM is generic.”

Although the appeals court acknowledged that a term previously held to be generic cannot have that designation changed by subsequent consumer recognition of the term, the court nevertheless held that such a rule only applies where “a prior court” held the term to be generic or was “previously commonly used” by the public. In essence, a term that has been held generic or is otherwise commonly used by the public will not qualify for registration, but somehow miraculously does not qualify as generic (and can acquire secondary meaning) if it does not meet those criteria?  If you are scratching your head, rest assured, I am too.

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At first glance, the district court and Fourth Circuit seem to have been persuaded by survey evidence that weighed in favor of the company.  I don’t know about you, but I don’t think that survey evidence can render a generic term like “restaurant” registrable.  Perhaps that is the point — the term “booking” may be a term well-known in the hospitality industry for placing a reservation, but maybe the term is not really generic.  For example, the term “booking” is not solely relevant to the hospitality industry; it arguably operates as a term of art in law enforcement for placing an arrestee into the criminal justice system.  I guess reasonable minds will differ. Let’s just hope that SCOTUS provides some much-needed clarification in the process.

Tom Kulik is an Intellectual Property & Information Technology Partner at the Dallas-based law firm of Scheef & Stone, LLP. In private practice for over 20 years, Tom is a sought-after technology lawyer who uses his industry experience as a former computer systems engineer to creatively counsel and help his clients navigate the complexities of law and technology in their business. News outlets reach out to Tom for his insight, and he has been quoted by national media organizations. Get in touch with Tom on Twitter (@LegalIntangibls) or Facebook (www.facebook.com/technologylawyer), or contact him directly at tom.kulik@solidcounsel.com.

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