USPTO v. Booking.com B.V., Docket No. 19-46 (Supreme Court 2020)
Oral arguments are set in this trademark case for May 4, 2020 [Listen Live at 9:00 am EST]. Booking.com is seeking to register rights on their eponymous service BOOKING.COM. The basic question is whether the addition of “dot com” to a generic term can result in a protectable trademark.
The company’s actually uses the word “booking” in its typical generic form: “The World’s #1 Choice for Booking Accommodations.” However, the company presented factual (survey) evidence that the addition of dot-com transforms the term in the eyes of consumers. Still, the PTO refused to register the trademark — holding that the “.com” addition is never enough. The PTO’s approach here relates back to the 1888 decision in Goodyear Co. v. Goodyear Rubber Co., 128 U.S. 598 (1888). At the time “Goodyear rubber” was seen as a generic term for a type of vulcanized rubber, and the Supreme Court held that adding the term “Company” would not change the matter — even if used for 20+ years with public understanding.
[T]he name of “Goodyear Rubber Company” is not one capable of exclusive appropriation. “Goodyear Rubber” are terms descriptive of well-known classes of goods produced by the process known as Goodyear’s invention. Names which are thus descriptive of a class of goods cannot be exclusively appropriated by any one. The addition of the word “Company” only indicates that parties have formed an association or partnership to deal in such goods, either to produce or to sell them. Thus parties united to produce or sell wine, or to raise cotton or grain, might style themselves Wine Company, Cotton Company, or Grain Company; but by such description they would in no respect impair the equal right of others engaged in similar business to use similar designations, for the obvious reason that all persons have a right to deal in such articles, and to publish the fact to the world. Names of such articles cannot be adopted as trade-marks, and be thereby appropriated to the exclusive right of any one; nor will the incorporation of a company in the name of an article of commerce, without other specification, create any exclusive right to the use of the name.
Id. Goodyear Co. was later followed by dot.com cases. See, In re Oppedahl & Larson LLP, 373 F.3d 1171 (Fed. Cir. 2004) (patents.com not registrable). However, in Oppedahl, the Federal Circuit noted that there is no “rule that always disregards the use of ‘.com’.” Id. This sets up the question as presented by the U.S. Gov’t seeking to bar registration of the mark:
Whether, when the Lanham Act states generic terms may not be registered as trademarks, the addition by an online business of a generic top-level domain (“.com”) to an otherwise generic term can create a protectable trademark?
My question in the case is whether the operation of the internet has changed so substantially in the past 20 years so as to require a rethinking. These days, almost no one types “.com” into their browser window but instead that portion is filled-in automatically. Likewise, many people (like myself) primarily use Booking.Com via an app rather than a web browser (image below). In the App setup, “.com” is merely a moniker and offers no direct functionality.
I had expected TLD’s to have lost all of their functionality by now — being eclipsed by other technology. They have continued to hold on, but I still expect that their supremacy (if it still exists) will only be for another decade or less. Hopefully, the Supreme Court will recognize that its decision here need not assume that our current approach is locked-in-stone.