Booking.com: A Potential Run-Around to Trademark Law’s Decision Not to Allow Protection of Generic Terms

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 4^th 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 4^th 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 4^th 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 4^th
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.