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.
“.com” is not the only suffix and many others are used frequently. In particular, “.gov” is used when you want to access a government agency.
“.com” after a generic term tends to immediately bring up a commercial company that is focused on the internet business model. It creates a space in our brains.
Just as the “X” after “Space” immediately conjures up an image of a company.
The comments below trying to remove “.com” as significant are ridiculous and the test is whether in the people it conjures up a company. And we all know it does.
Don’t forget .edu either.
“.com” is not superfluous and to argue that it is only exposes you as agenda driven.
The fact is that “.com” after a name still conjures up the image of a company that is focused on an internet business model.
The “conjure up a company” directly reads on the US Supreme Court case that “company” is not — and cannot be — enough to provide trademark protection.
Congrats Night Writer, you just proved your own assertions wrong as a matter of law.
bookings.com is not “company.”
Again, anon, I responded to all your concerns. You need to learn to write your responses as issues and be concise.
Your “response” was running away.
My issue is that you are pretending otherwise.
How is that for being concise?
I will also note that you left the prior discussion without answering my points on the plethora of sTLDs out there.
That you seem to have woken up this morning realizing that such exist does not speak well of your ability to engage in discussions on this topic.
Any comments on this Sup. Ct. telephone oral argument? I had to miss it.
One reporter has noted the first questions since March 2019 from Justice Clarence Thomas — who often goes several years without asking any questions. “Justice Thomas asking a question at oral argument now that it’s a more civilized questioning process,” tweeted Carrie Sevarino, a former Thomas law clerk.”
[Note that Justice Thomas had complained years ago in a C-Span story about the Sup. Ct. years ago about justices constantly interrupting attorneys and each other before than can even complete sentences. Apparently that did not happen in the sequential questioning format used here.]
“that did not happen”
Not so – it did happen. H0wever, it appears that the Chief Justice singularly controlled the flow of the conversation, and he would interrupt with a “Thank you counsel, Justice ___ ” segue that announced which Justice would then have the floor.
I found it interesting that the advocate for Booking.com indicated that they would have no trouble with others using iBooking.com, eBooking.com or other derivations on the front end, but none of the Justices were savvy enough to ask if they would be equally nonplussed about others using Bookings.org, Bookings.travel, or other variants in the ever burgeoning sTLD space.
Of course, as I provide in the links, there are very real consequences (in multiple directions) for allowing the “.com” portion to elevate another portion of a compound mark to be a distinct item with its own possibility of capturing trademark protection (and some of these consequences have effects BEYOND just the possibility of the non-.com portion itself being a purely generic word — for which surveys are not even applicable).
OT but potentially important: Who was the toilet flush? The logical answer is Ginsburg but my money’s on Breyer.
OT but potentially important: The Federal Circuit invited Supplemental Briefing in Facebook v. Windy City on the Applicability of the Sup. Ct. decision in Thryv v. Click-to-Call.” Facebook’s panel for rehearing is currently pending at the Federal Circuit.
A cross-blog plug: link to patentdocs.org – noting that Prof. Crouch is featured on the listed panel.
This is a pay event, and I have no connection to any of the parties.
Yes, this Federal Circuit invited Supplemental Briefing in Facebook v. Windy City is directly relevant to that upcoming IPO seminar – on the extent of the scope of non-appealability of PTAB IPO initiation decisions that can be implied from the Sup. Ct. decision in Thryv v. Click-to-Call.
P.S. It might possibly reduce rant levels here a bit in advance to note that making IPR joinder denials or other such IPR denials* NON-appealable would be strongly in Favor of patent owners. It could allow the usually parallel, but likely to be stayed, D.C. suit by the patent owner to continue.
*which have been increasing
Not sure that I buy any “pro-patentee” spin that you seem to want to sell (especially in view of your choice of word of ‘rant,’ given that the large majority of rants here are NOT of the pro-patent variety).
This issue has been covered in a series over at the other blog.
The last of that series: link to ipwatchdog.com
In that link is a buried link to a prior more in-depth discussion (well, as in-depth as I could drag Night Writer into having). The direct link to that discussion: link to ipwatchdog.com
“but instead that portion is filled-in automatically”
You err, Professor, on thinking that ANY functionally is lost merely because the TLD is automatically filled in.
The “.com” REMAINS every bit as functional — and every bit as necessary — to reach the single page that the mechanism of the Internet provides.
You want to reach a different page? Say for example: “.bookings,” or “.travel,” sure, one has to type those different items into the URL retrieval mechanism — but they are still very much there, and very much EXACTLY functional as any other TLD in the necessary mechanism of providing the resulting page.
I DO hope that the Supreme Court recognizes certain NECESSARY functionalities, even as law professors get a little lazy.
My only quibble is with ” These days, almost no one types “.com” into their browser window.” Many do not, but those teaching internet usage classes advise doing so if you want to pull up the Company itself to contact instead of retailers, blogs, etc..
What browsers automatically type “.com” for you?
When I type “patentlyo” into my Google machine I am taken to patentlyo.com.
That being said, I regularly type the .com part when entering an email address.
True.
That is because you have come to patentlyo.com before and your browser is autocompleting it for you. It’s not just randomly adding .com.
+1 — the “functionality” has NOT gone away.
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