The U.S. Supreme Court’s opinion about the domain name <booking.com> resolved only a very narrow issue: Whether a domain name that consists of a generic word can be registered as a trademark if the domain name as a whole has obtained “acquired distinctiveness” or “secondary meaning” in the minds of the public.
While the Supreme Court said the answer to that question is “yes,” the opinion is unlikely to have any immediate far-reaching impacts on trademark registrations, let alone domain name disputes under the Uniform Domain Name Dispute Resolution Policy (UDRP).
Background
Here’s what happened in the Supreme Court’s domain name case:
Booking.com — a company that maintains a travel-reservation website — filed four applications at the U.S. Patent and Trademark Office (USPTO) to register trademarks that included the term “Booking.com”. The USPTO refused registration, concluding that the marks were generic names for hotel-reservation services.
The District Court determined that “Booking.com” (unlike just the word “Booking”) was descriptive, not generic; that the term had acquired secondary meaning; and that it had met the distinctiveness requirement for registration.
The Court of Appeals for the Fourth Circuit affirmed, rejecting the USPTO’s position that a generic word in combination with the top-level domain “.com” was “necessarily generic.”
The Supreme Court affirmed, writing: “We decline to adopt a rule essentially excluding registration of ‘generic.com’ marks.”
Trademark Issues
Explaining the well-understood scale of distinctiveness that has long applied to trademarks, the Supreme Court said that inherently distinctive marks are more likely to be eligible for trademark registration, citing such examples as “Camel” (arbitrary for cigarettes), “Kodak” (fanciful for film), and “Tide” (suggestive for laundry detergent). On the other hand, the Court said, descriptive terms (such as “Park ‘N Fly” for airport parking) are not eligible for registration unless they have obtained “acquired distinctiveness” or “secondary meaning.” And a generic term, which is the name of a good itself (such as “wine” for wine), is ineligible for trademark registration at all.
In reviewing Booking.com’s application to register “Booking.com” as a trademark, the USPTO relied on a previous Supreme Court opinion from 1888, Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co. In that case, the Court had held that “Goodyear Rubber Company” could not serve as a trademark because the word “Company” “supplied no protectable meaning” to an otherwise generic term.
Similarly, the USPTO argued, adding the top-level domain “.com” to an otherwise generic term conveys no additional meaning that would distinguish one provider’s services from those of others, as trademark law requires.
The Opinion
The Supreme Court, however, disagreed with the USPTO. It said:
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.”… Thus, consumers could understand a given “generic.com” term to describe the corresponding website or to identify the website’s proprietor. We therefore resist the PTO’s position that “generic.com” terms are capable of signifying only an entire class of online goods or services and, hence, are categorically incapable of identifying a source.
As the Court emphasized, the USPTO’s reliance on the Goodyear opinion was flawed because “whether a term is generic depends on its meaning to consumers.”
To determine whether consumers associate a term with a specific source, the Court said, it may be appropriate to consider surveys. In this case, 74.8 percent of survey participants thought that “Booking.com” was a brand name, while only 23.8 percent believed that it was a generic name.
The Court provided its own example that makes this understanding clear:
[W]hether “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.
Of course, consumers might refer to Travelocity as a “booking” site, or they might seek out someone else’s favorite “booking” service. But “Booking.com,” on the other hand, signifies a specific service and is not a generic term.
An Interesting Flaw
While the Supreme Court’s example about “booking” versus “Booking.com” is easy to understand, it actually highlights one misunderstanding about the domain name system.
As quoted above, the Court said that “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.’”
Yes, it is true that every domain name is unique (there can only be one <booking.com> (or one <giga.law>, etc.), but more than one company can be associated with a single domain name. See, for example, the websites associated with the domain names <scrabble.com> or <playtex.com>. Both of those websites are shared by two companies that each own corresponding trademark rights.
Interestingly, the website using the <playtex.com> domain name prominently announces: “Although we may have a name in common… We are two completely separate companies”. And the website using the <scrabble.com> domain name directs visitors elsewhere depending upon where they are located, noting: “All intellectual property rights in and to the game are owned in the U.S.A and Canada by Hasbro Inc., and throughout the rest of the world by J.W. Spear & Sons Limited of Maidenhead, Berkshire, England, a subsidiary of Mattel Inc.”
So, while the <booking.com> domain name is in fact associated with only one company, that’s not necessarily true as a general rule for all domain names.
Implications
In any event, the Supreme Court’s opinion in the Booking.com case is narrow.
While there is some concern that the opinion may be used by trademark owners to expand their scope of protection on the Internet, the opinion likely will allow for trademark protection only in very specific cases. Not every generic.com will be eligible for trademark protection as a result of the Supreme Court’s opinion — because trademark applicants must still show that their marks have acquired distinctiveness and are associated by consumers with a specific source of goods or services.
Plus, the opinion is simply about trademark registrations, not domain name disputes. As the Court wrote, “Booking.com acknowledges that federal registration of ‘Booking.com’ would not prevent competitors from using the word ‘booking’ to describe their own services.”
Indeed, as the Court itself observed, other companies prior to Booking.com already have obtained trademark registrations for their domain names containing generic words, such as ART.COM and DATING.COM. Presumably, these registrations have not led to inappropriate disputes over trademark rights online.
As a result, I doubt we will see an explosion of generic.com trademark registrations. And the Supreme Court’s opinion will unlikely lead to a significant increase in domain name disputes, under the UDRP, traditional trademark infringement law, or otherwise.
