I. Case Background
In 2011, Booking.com filed for federal trademark registration for marks related to “Booking.com” with the United States Patent and Trademark office (USPTO).[i] Booking.com is a website which offers customers the ability to book travel and hotel reservations. Upon review, the USPTO rejected Booking.com’s application on grounds that the marks were not protectable because “Booking.com” is generic as applied to the services they are providing.[ii] Further, the USPTO noted that the marks were merely descriptive and had no secondary meaning, which is required for trademark protection.[iii]
Booking.com appealed the USPTO’s decision to the Trademark Trial and Appeal Board (TTAB). The TTAB affirmed the USPTO’s decision. In agreeance with the USPTO, the TTAB found that Booking.com was a generic term for the services that are being offered and was therefore ineligible for trademark protection.[iv] In support of its opinion, the TTAB noted that “booking” generically refers to “a reservation or arrangement to buy a travel ticket or stay in a hotel room” and “.com” indicates a commercial website.[v] Thus, consumers would reasonably understand “Booking.com” to refer to an online reservation service for travel, which are the services proposed in Booking.com’s trademark applications.
The case proceeded on appeal to the district court where, in support of its argument, Booking.com submitted a Teflon survey that showed that 74.8% of consumers recognized “Booking.com” as a brand rather than generic service. Ultimately, the district court reversed the lower court’s decisions by ruling in favor of Booking.com. The court held that although “booking” is a generic term, Booking.com is nonetheless descriptive.
The Fourth Circuit Court of Appeals affirmed the district court’s decision and the case is now before the Supreme Court of the United States on writ of certiorari.
II. Generic v. Descriptive
A key intellectual property issue in this case has been whether “Booking.com” would constitute as a protectable trademark. Trademark protection helps prevent consumer confusion between products. Thus, having the ability to register “Booking.com” as a trademark is vital to Booking.com’s business and reputation. In this particular case, the disagreement and possible trademark protection rests upon whether “Booking.com” is a generic or descriptive term.
In order to be a protectable trademark, the mark must be distinctive.[vi] “To determine whether a proposed mark is protectable, courts ascertain the strength of the mark by placing it into one of four categories of distinctiveness, in ascending order: (1) generic, (2) descriptive, (3) suggestive, or (4) arbitrary or fanciful.”[vii] Terms that are fanciful, arbitrary or suggestive are considered distinctive enough and receive trademark protection.[viii] If a term is descriptive, the term will only receive trademark protection if it has a secondary meaning.[ix] In contrast, generic terms never receive trademark protection.[x]
In this case, there is dispute between the two parties regarding whether the term “Booking.com” is descriptive or generic. Booking.com is fighting for trademark protection in order to protect their namesake, competition, and reputation. The USPTO is in charge of issuing trademark protection and argues to prevent overprotection of general terms.
A term is generic if it is the common name of a product. For example, terms such as “Lite Beer” for light beer or “Convenient Store” for convenience stores would constitute as generic terms.[xi] Generic terms do not contain source-identifying significance and do not distinguish the particular product or service from other products or services on the market. Thus, a generic term can never obtain trademark protection because if it were granted protection the effect would be that the owner of the mark is granted a monopoly over a common term.[xii]
To determine whether a mark is generic, the court follows a three-part test: (1) Identify the class of product or service to which use of the mark is relevant; (2) identify the relevant consuming public; and (3) Determine whether the primary significance of the mark to the relevant public is as an indication of the nature of the class of the product ort services to which the mark relates.[xiii] The Langham Act provides that the primary significance of the mark shall be the test for determining whether the mark has become a generic name of goods or services on, or in connection with, which it has been used.[xiv] The inquiry looks to whether the term is understood by the relevant public to refer to that genus of goods or services. To ascertain the public’s understanding of a term, the court may look to consumer surveys.[xv] In assessing whether a term is understood by the relevant public to primarily refer to the service or source, the court looks to the proposed mark as a whole as opposed to separate components.[xvi]
For example, in A.J. Canfield Co. v. Honickman, the court applied the primary significance test to determine whether Plaintiff’s term was generic or descriptive with regard to trademark protection.[xvii] In this case, Plaintiff registered the term “Diet Chocolate Fudge Soda” for trademark protection and sought to prevent Defendant from using the term in conjunction with their soft drink product.[xviii] In determining that the term is generic, the court noted that the primary significance test is “generally satisfied if a term signifies a product that emanates from a single source… but it is not satisfied if the product that emanates from a single source is not only a product brand but is also a product genus.”[xix]
A term is descriptive if it describes a function, use, characteristic, size or intended purpose of the product.[xx] The Federal Trademark Act of 1946, also known as the Lanham Act, allows trademark protection to marks that are distinctive of the applicant’s services.[xxi] This includes terms descriptive marks that become distinctive.[xxii]
In order to qualify as a descriptive term, the term must have a secondary meaning. Secondary meaning indicates that a term has become sufficiently distinctive to establish a mental association in the relevant public’s minds between the proposed mark and the source of the product or service.[xxiii] By requiring the term to have a secondary meaning, courts have emphasized that terms that may seem merely descriptive in nature can still be protected if consumer recognize the terms as associated with a particular source.[xxiv] For example, when “.com” is combined with a generic second-level domain, the resulting composite may be non-generic where evidence demonstrates that the mark’s primary significance to the public as a whole is the source, not the product.[xxv]
In showing that a term has a secondary meaning, courts may look to a variety of sources and evidence. Whether a term has a secondary meaning is a question of fact and is “to be determined from relevant evidence probative of probably customer satisfaction.”[xxvi] In the past, courts have considered consumer surveys, the extent and reach of advertising, and the quantity of sale of the particular service in determining whether a secondary meaning is present.[xxvii] In determining whether customer survey evidence will be admitted for the purpose of showing a secondary meaning, the court considers the qualifications of the witness, the helpfulness of the testimony, and the reliability and fit of the testimony.[xxviii]
For example, in J&J Snack Foods Corp v. Earthgrains Co., there was a debate over whether the term “Break & Bake,” which refers to the act of breaking apart cookie dough and baking it, was a descriptive term with a secondary meaning for purposes of trademark protection.[xxix] In support of its argument that there was a secondary meaning, J & J Snack Foods submitted a customer’s survey which showed that the mark was a suggestive mark.[xxx] Ultimately, the court ruled the survey was inadmissible because the survey lacked validity and failed to raise a genuine issue of material fact.[xxxi]
III. Interests & Impact at Play
In this case, the court’s resolution of whether “Booking.com” is generic or descriptive will largely impact the intellectual property community, and more specifically the trademark community, going forward.
A. United State Patent and Trademark Office
In its petition for writ of certiorari, the USPTO directed the court’s attention to a 19th century Supreme Court case by the name of Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co. In that case the court ruled that the addition of an entity designation to a generic term does not create a protectable mark.[xxxii] Further, the court noted that “the word ‘Company’ only indicates that parties have formed an association or partnership to deal in such goods and that adopting a name like ‘Grain Company’ will not foreclose others from dealing” in the grain industry.[xxxiii] In support of its conclusion, the court noted that if they had granted trademark protection the effect of that protection would have given the first user of that name a monopoly on language.
In reliance on Goodyear, the USPTO argues that granting trademark protection to Booking.com would have the same effect. In referencing Goodyear, the USPTO argues that the addition of “.com” to the term “booking” does not create a protectable mark because it conveys only that Booking.com operates a commercial website via the Internet. In furtherance of this argument, the USPTO argues that the online context of trademark registration for this type of mark is particularly problematic. That is because under the domain-name system, only one entity can have contractual rights to use a particular domain name at a given time. This specific quality of the Internet is an added concern for the USPTO because it gives significant competitive advantages to entities that obtain generic domain names and register them for protection. In allowing trademark protection for “Booking.com”, the USPTO argues that it would compound those advantages and permit the monopolization of language that trademark law is meant to discourage. In fact, courts and scholars have repeatedly agreed that “protecting exclusive rights in generic terms would inhibit free expression in the marketplace and harm competition.”[xxxiv]
For this issue, the burden lies with the USPTO as the party claiming the mark is generic. This is because a finding of generic carries significant consequence because once a mark is determined to be generic; it can never receive trademark protection.
To support its argument that “Booking.com” is a descriptive mark (and therefore afforded trademark protection) and not a generic mark, Booking.com introduced the results of its Teflon Survey. The results of the survey showed that 74% of customers recognize “Booking.com” as a brand rather than a generic service.
This evidence is used by Booking.com to support their argument that the primary significance of the mark is descriptive. To counter the USPTO’s objection to the inclusion of the survey, Booking.com points to previous cases that have included customer service results that show a particular mark is descriptive or generic.[xxxv] Further, the USPTO was not able to provide evidence that the mark “Booking.com” was commonly used before its association with Booking.com.
In response to the USPTO’s argument that the registration of “Booking.com” as a mark will lead to abusive practices, Booking.com largely relies on the purpose of the Langham Act. The Langham Act was enacted by Congress in 1946 and served as national system for trademark registration. In creating the Langham Act, Congress identified two reasons to protect trademarks: (1) “To protect the public so it may be confident hat, in purchasing a product bearing a particular trademark which it favorably knows, it will get the product which it asks for and wants to get” and (2) “where the owner of a trademark has spent energy, time, and money in presenting the public the product, he is protected in his investment from tis misappropriation by pirates and cheats.”[xxxvi] In refusing to identify “Booking.com” as a protectable mark, Booking.com argue that the purpose of the Langham Act would be defeated because it would encourage third parties to benefit from a company’s reputations and mislead customers by falsely advertising themselves as part of the brand. Further, Booking.com emphasizes that, “no principle of jurisprudence permits the denial of trademark registration based only on such bare speculation of possible future improper motives.”[xxxvii]
To refute the USPTO’s argument that registering “Booking.com” as a mark would deprive competing services to reference an article by its name, Booking.com points to numerous companies in the marketplace who are able to provide travel services under other trademarks such as Orbitz, Expedia, and Travelocity. Additionally, Booking.com notes that there are ample readily available terms for the travel services that Booking.com provides.
Thus, in denying “Booking.com” trademark protection, Booking.com argues that it will allow free unscrupulous competitors to prey on its customers by falsely advertising that they are associated with Booking.com. Additionally, given the popularity of Booking.com as a company, the risks of this confusion could be substantial.
[i] Booking.com v. United States Patent and Trademark Office, 915 F.3d 171, 177 (2019).
[iv] Id.at 178.
[vi] Id. at 176.
[xi] See OBX-Stock, Inc. v. Bicast, Inc. 558 F.3d 334, 340 (2009).
[xii] 15 U.S.C § 1051.
[xiii] Booking.com, 915 F.3d at 179.
[xiv] 15 U.S.C § 1064(3).
[xv] Booking.com, 915 F.3d at 181.
[xvii] 808 F.2d 291, 292 (1986).
[xix] Id. at 300.
[xx] Booking.com, 915 F.3d at 177.
[xxi] Lisa P. Ramsey, Descriptive Trademarks and The First Amendment, 70 Tenn. L. Rev. 1095, 1096 (2003).
[xxiv] Descriptive Marks, Justia (last visited Feb. 28, 2020), https://www.justia.com/intellectual-property/trademarks/strength-of-marks/descriptive-marks/
[xxv] Id. at 186.
[xxvi] Jason K. Levine, Contesting the Incontestable: Reforming Trademark’s Descriptive Mark Protection Scheme, 41 Gonz. L. Rev. 29, 36 (2006).
[xxviii] J & J Snack Foods Corp. v. Earthgrains, 220 F. Supp. 2d 358, 368 (2002).
[xxix] Id. at 361.
[xxx] Id. at 361-362.
[xxxi] Id. at 362.
[xxxii] Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U.S. 598, 602-603 (1888).
[xxxiv] Ramsey, supra note 18 at 1098.
[xxxv] See Princeton Vanguard, LLC v. Frito-Lay N. Am., Inc., 786 F.3d 960, 969 (Fed. Cir. 2015); Automobile Club of Southern Cal. v. The Auto Club, Ltd., 2007 WL 704892 at *4 (C.D. Cal. Mar 15, 2007); In re Callaway Golf Co., 2001 WL 902004 at *7 (T.T.A.B. Aug 9 2001).
[xxxvi] S. Rep. 1333, at 1 (1946).
[xxxvii] United States Patent and Trademark Office v. Booking.com, 2019 WL 3854679 at *35-36 (U.S. 2019).