Author Details: Ishita Goel, 3rd year student at Symbiosis Law School, Noida pursuing B.B.A.LL.B.

Meta Description: In a landmark judgement, The U.S Supreme Court declared that “booking.com” which is a generic
term combined with a generic domain name would not render it as a generic name, but a non-generic one. With a 8-1
majority, and Justice Stephen Breyer’s dissent this has become a precedent for all those websites who were prone to
being infringed and could not get their marks protected. “Booking.com” being a travel and reservation company had a
“descriptive” mark, which was denied protection by the PTO. In an appeal to the U.S. Court of Appeals for the 4th
Circuit, the court granted the service mark to “booking.com” and further the Supreme court, in a counter appeal by the
PTO, stated that if the enterprise is able to show a secondary meaning associated with the name, any “descriptive”
mark can be protected under Trademark Law. This case during arguments dealt with a clash between doctrines that
defined trademark law, where one protected fair trade and competition and the other ensured that the public does not
get confused or treated with fraud. This judgement is also one which has utilised public survey as a determining factor
in favor of the company to portray their brand and acceptance by the consumers, setting a bad precedent for future
cases as mentioned by Justice SOTOMAYOR, J.

“Booking.com” to be trademarked, says Supreme Court, Washington.

On 30th June 2020, The Supreme Court of the United States upheld the judgment of the U.S. Court of Appeals for the
4th Circuit, which granted ‘booking.com’ to be registered as a service mark despite being a ‘generic’ term as
contended by the PTO. The company, Booking.com, had applied to get their four service marks registered and
protected in the Principal Register of the United States, as prescribed by the Lanham Act, 1946. According to Berne
convention and TRIPS agreement, any trade or service mark is essentially a sui generis indication for the consumers to
identify a specific service/goods to be of a certain enterprise. This term can be “word, name, symbol, or device, or any
combination of such”1. Trademarks are essentially acquired by the company to enjoy certain valuable benefits and
create a more secure brand name and have fair competition.

A trademark has to be distinctive and not descriptive, whereas “Booking.com” was an amalgamation of two generic
and descriptive terms, which according to PTO necessarily created a generic name. Any descriptive term cannot be
registered as it would disable other competitors from utilising this term and create a monopolistic anti-competitor
market. “Booking.com”, is a company that provides services in relation to travel and hotel reservations through
internet services. It provides such service under this brand name and also as their domain name for their website. The
PTO ( Patent and trademark Office) denied their application with the contention that the combination of a generic
name with a generic domain would create a generic mark, further explaining that “booking.com” does not create a
distinguable meaning and would only be referred to as “an online reservation service for travel, tours, and lodgings”.
To get a fair justice Booking.com approached the U.S. district court where they were able to produce further evidence
of their mark creating a secondary meaning and not being descriptive in nature. They did so by producing a survey.
The U.S. Court of Appeals for the 4th Circuit sided with booking.com. Discontent with the judgement PTO
approached the U.S Supreme Court where it was further argued upon. And With a 8-1 majority Booking.com won.

Justice Stephen Breyer in his dissent argued that many trademark policies recognise that “Terms that merely convey
the nature of the producer’s business should remain free for all to use.” This judgement would open gates for anti
competitive businesses and would enable any generic name combined with “.com” to have their mark protected,
setting a bad precedent. But, According to Wal-Mart Stores, 529 U. S., any descriptive word to be qualified for
registration has to create a significant distinctiveness, a different meaning of the term in the minds of the consumers in
regards to their product. Thus, any generic name being incapable of creating the secondary meaning renders the term
ineligible for registration as a trademark. 2 The majority view also supported the doctrine that any descriptive term that
has acquired enough brand value and has persuaded the consumers to construed their mark to be solely the producers
can be protected and registered as a trademark. This is done to ensure a certain quality and source of service to the
consumers. The Travel company through a survey projected that its name had created a separate meaning in 74%
people’s mind and this substantive population has to be protected by getting their service mark registered. The court
disregarded the previous fundamental doctrine and also rebuffed PTO’s contention of creation of a monopoly and
1 15 U.S. Code § 1127
2 Otokoyama Co. v. Wine of Japan Import, Inc., 175 F. 3d 266, 270 (CA2 1999)
unfair competition.Judge GINSBURG was of the view that a single domain name would be easier for the consumers to
authentify the source and be less vary as infringement of such a generic.com name would be easily detected thus
mitigating any anticompetitive harms.

This being a judgement one of the first few that has been done through a telephonic method due to the current
pandemic going on, in my view is bad in law as it sets a precedent of survey’s having highly persuasive value to
portray the public's opinion at the Supreme Court and the same has been advocated by SOTOMAYOR, J. the survey
as produced by the company also recognised that 33% of the public saw “washingmachine.com” as a brand even
though there exists none. This produces many more questions over the credibility of the survey and of public opinion.
Second, rebutting a longstanding fundamental policy that let maintain fair competition would give unfair advantages.
Any descriptive and generic name has to be open and free to all to describe their products and limiting this would
disable and create monopolistic markets. No one would be able to manufacture and sell their products/services.
Specially, taking this case, “Booking” has a meaning of getting reservations done and even if a domain has been added
in it, it would still be considered as a website that does reservations. This would disable other enterprises from utilising
and describing their services and to convey the same service. This would also make consumers more susceptible to
being frauded. This judgement would allow other generic terms combined with a generic domain an unfair benefit
even though they have been successful in creating a different meaning in their minds. And thus, this judgement will
promote surveys and let descriptive terms to be trademarked which will set a poor precedent for the upcoming lawsuits
and create difficulty in proving the contrary.

References
1. Jessica Litman, Opinion analysis: Court holds that “generic.com” marks may be registered trademarks or
service marks when consumers do not perceive them as generic, SCOTUSblog (July. 26, 2020, 6:32 PM),
https://www.scotusblog.com/2020/06/opinion-analysis-court-holds-that-generic-com-marks-may-be-
registered-trademarks-or-service-marks-when-consumers-do-not-perceive-them-as-generic/
2. U.S. Patent and Trademark Office v. Booking.com B.V. (06/30/2020)
3. 15 U.S. Code § 1127
4. Otokoyama Co. v. Wine of Japan Import, Inc., 175 F. 3d 266, 270 (CA2 1999)