United States Patent & Trademark Office (USPTO) v. Booking.Com B.V. (Supreme Court 2020) [Full Decision PDF]
In this trademark case, the USPTO asked the court to implement its “nearly per se” rule that a generic term remains generic even if coupled with a generic top level domain (such as “.com”). The 4th Circuit sided with BOOKING.COM and the Supreme Court has now affirmed: “[W]e discern no support for the PTO’s current view in trademark law or policy.” Id.
According to the majority, the question is not whether some portion of BOOKING.COM is generic but rather whether the term “taken as a whole” is generic. Then the court queries — what type of generic thing is a “booking.com”
That should resolve this case: Because “Booking.com” is not a generic name to consumers, it is not generic.
In its opinion, the court notes the PTO inconsistency (ART.COM and DATING.COM are both registered).
The following quote from the case is probably the most controversial:
[I]f “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. Consumers do not in fact perceive the term “Booking.com” that way, the courts below determined.
The majority opinion was written by Justice Ginsburg and joined by six other justices, including all five conservatives. Justice Sotomayor concurred in a very short opinion; and Justice Breyer wrote in dissent and would have applied Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U. S. 598, 602 (1888). Justice Breyer writes:
Goodyear recognized that designations such as “Company,” “Corp.,” and “Inc.” merely indicate corporate form and therefore do nothing to distinguish one firm’s goods or services from all others’. . . .[W]here a compound term consists simply of a generic term plus a corporate designation, the whole is necessarily no greater than the sum of its parts. . . .
Breyer in dissent.
Breyer spends some time focusing on the problems associated with survey evidence. I suspect that aspect of his dissent will have some impact on how courts conduct trademark cases in the future.