By: Mickey Tomlinson
If the title sounds familiar, you are part of the reason Booking.com successfully trademarked “Booking.com” while paving the way for owners of similar marks to receive trademark protection. In June of 2020, the Supreme Court of the United States (“SCOTUS”) held that a “generic.com” is eligible for trademark registration so long as the consumer recognized the mark as a distinguishing member of a certain class of goods or services.[i] SCOTUS’s Booking.com decision made consumer surveys invaluable for owners of similar marks seeking trademark protection because as long as consumers identify the “generic.com” with the source, which can be illustrated via consumer surveys, it can and should receive trademark registration. This blog post addresses the importance of consumer surveys in the Booking.com BV decision and what the decision likely means for consumer surveys during trademark registration going forward.
In a landmark decision, the Supreme Court held that a “generic.com” mark can be trademarked if “consumers in fact perceive that term as the name of a class or instead, as a term capable of distinguishing among members of the class.”[ii] Further, the Court barred a per se rule that a “generic.com” mark is automatically generic and thus cannot be trademarked.[iii]
Booking.com sought a trademark for “Booking.com” but the United States Patent and Trademark Office (“USPTO”) denied its trademark because it found “Booking.com,” “a generic name for online hotel-reservation services . . . .”[iv] Booking.com provides customers online hotel booking and reservation services (but I’m sure you already knew that) and “Booking.com, Booking.yeah”[v] is lingering in your head like a catchy tune you can’t help but hum.
“Booking” is undoubtedly a generic term because it “names a ‘class’ of goods or services, rather than any particular feature or exemplification of the class”[vi] and does not, on its own, achieve distinctiveness as required to be placed on the principal trademark register.[vii] Despite it’s obvious generic qualities, SCOTUS evaluated “Booking.com”’s distinctiveness on (1) the compound term as a whole and (2) its meaning to consumers.[viii] The analysis turns on consumer perception and whether consumers identify “Booking.com” as a class of goods or services or a specific entity that provides hotel booking and reservation services. SCOTUS placed massive weight on consumer perception because the Lanham Act basically states whether a mark is distinctive or generic depends on the significance the consumers give that mark.[ix]
Booking.com presented evidence in the form of consumer surveys, along with the fact it held a domain name for “BOOKING.COM,” to show “Booking.com” met the distinctiveness requirement.[x] It is important to note, the determinative factor is the consumer perception, while showing Booking.com had a domain name for the mark helped illustrate consumers would associate “Booking.com” with its specific domain name.[xi] The consumer surveys were persuasive to SCOTUS, because the surveys illustrated that consumers identify “Booking.com” with a specific entity that provides a specific service of online hotel reservation services and thus, is not generic.[xii] SCOTUS also found the domain name persuasive evidence of “Booking.com”’s distinctiveness because “only one entity can occupy a particular internet domain name at a time, so . . . BOOKING.COM refers to some specific entity.”[xiii]
Justice Breyer disagreed with the majority’s decision, specifically (1) that placing “.com” at after a generic word, “Booking,” still makes “Booking.com” generic within traditional trademark law[xiv] and (2) the fact consumer identify “Booking.com” doesn’t change the fact that it is still generic and thus ineligible for trademark registration.[xv]Justice Breyer’s problem with the majority is that “trademark law does not protect generic terms, meaning terms that do no more than name the product or service itself,”[xvi] and since Booking.com’s mark undoubtedly is inherently generic, because it names exactly what it does, and thus is why Booking.com’s mark is ineligible for trademark registration under traditional trademark law.[xvii] Further, Justice Breyer does not believe a generic term could ever obtain secondary meaning.[xviii]
The second problem Justice Breyer has is that adding “.com” is no different than a company adding “inc.” to a generically named company,[xix] which would be ineligible for trademark registration despite that company’s ownership of the domain name[xx] for the mark because the term is still generic in that it “has no capacity to identify and distinguish the source of goods or services.”[xxi] Justice Breyer further stated that Lanham Act did not “disturb the basic principle that generic terms are ineligible for trademark protection and nothing in the [Lanham] Act suggests that Congress intended to overturn Goodyear.”[xxii] Basically, because “booking” is itself generic, the addition of “.com” does not make “booking” non-generic for trademark registration when it becomes “Booking.com.”[xxiii] Further, “Booking.com” is still generic for trademark registration even if consumers can identify the mark with the source because the generic term is still generic.[xxiv] The consumer survey evidence Booking.com provided, doesn’t change Justice Breyer’s conclusion that “Booking.com” is generic because (1) the fact consumers can identify “Booking.com” with its source does not mean it the mark itself is non-generic and thus eligible for trademark protection[xxv] and (2) Justice Breyer finds that consumer survey data may be “an unreliable indicator of genericness.”[xxvi]
Ultimately, Justice Breyer is concerned with competition, specifically that companies of generic marks getting a monopoly on generic words that have “serious anticompetitive consequences in the online marketplace;”[xxvii] some of these consequences include: owners of generic marks ease in marketing to consumers, domain name exclusivity, and ease of consumers to find generic domain names.”[xxviii] While Justice Breyer’s concerns and arguments are valid, consumer surveys (for the foreseeable future) were a large reason “Booking.com” received trademark registration and why consumer surveys will continue to be an influential factor that will be considered for other similar marks.
“Your opinion as a shopper is extremely valuable to us” is going to pack an entirely different punch now because whether you—as the consumer—associate a mark like “Booking.com” is going to determine whether or not that mark receives trademark registration. Consumer surveys are ways “to gather data on the beliefs and attitudes of consumers towards products, concepts, or names.”[xxix] Further, consumer surveys “can provide concrete, statistical evidence to connect the mark to the source of the product, rather than the product itself.”[xxx]
Consumer surveys were already important evidentiary tools in trademark infringement cases, but they are likely to become invaluable in the trademark registration process for similar “generic.com” marks because of the Booking.com decision. SCOTUS explicitly refused to adopt a “nearly per se rule” that would have denied “Booking.com” trademark registration[xxxi] because the consumers identified the mark with the source, thus aligning its decision with the Lanham Act’s focus on the value of consumer perception.[xxxii] Consumer surveys will likely take a more active role in the trademark registration process—in that they will be offered early in the registration process as support—because SCOTUS made it clear the determinative factor for trademark eligibility is consumer perception and consumer surveys are an effective way to illustrate that.[xxxiii] Now other “generic.com”’s have a good chance at trademark registration, assuming all other requirements are met, by submitting consumer surveys illustrating that consumers specifically identify the mark with the source.
Going forward, similar “generic.com” marks have a fighting chance for trademark registration because they are “non-generic” so long as they can provide consumer surveys as evidence. I believe that the Booking.com decision means more applicants will submit consumer evidence early in the registration process—rather than at the District Court level as Booking.com did—since SCOTUS emphasized the importance of consumer perception in determining whether a mark is non-generic.
The Dissent and The Reliability of Consumer Surveys
Justice Breyer was skeptical about the weight the majority gave to consumer surveys in determining the trademark eligibility for a “generic.com” because eventually, after time in marketplace and advertisement, consumers will identify that generic term with the source; but Justice Breyer does not believe that changes the fact the generic term is fundamentally generic.[xxxiv] Justice Breyer was arguing that any “generic.com” mark will be eligible for trademark registration if they financially invest into advertising over some time which then, the consumer will be able to identify the mark with the source in consumer surveys.[xxxv] Since consumer surveys had so much weight in this case—as it likely will in future “generic.com” cases—Justice Breyer’s skepticism doesn’t necessarily come from the consumer surveys themselves but rather it lies in the fact the “generic.com” will sidestep fundamental trademark law. This sidestep occurs by putting money into advertisements or through another avenue so the “generic.com”’s can present source-identifying evidence, satisfying the distinctiveness requirement through evidence of consumer perception.
SCOTUS found that consumer perception is the fundamental inquiry for trademark eligibility and consumer surveys provide evidence of that. Consumer surveys will likely be incorporated early in the trademark registration process and will play an invaluable role for similar “generic.com” marks because evidence of consumers identifying the “generic.com” with the source will increase their chances of successful trademark registration.
[i] USPTO v. Booking.com B.V., 140 U.S. 2298 (2020) (emphasis added).
[ii] Id. at 2307.
[iv] Id at 2301.
[v] Stuart Elliot, From Amsterdam, a Lodging Web Site Invades the U.S., The New York Times (Jan. 21, 2013), https://www.nytimes.com/2013/01/22/business/media/from-amsterdam-a-lodging-web-site-invades-the-us-advertising.html
[vi] USPTO, 140 U.S. at 2304 (2020) (describing the definition of a “generic” term).
[vii] See USPTO 140 U.S. at 2301 (2020).
[viii] See id. at 2304 (describing the foundation of the Court’s analysis to determine if “Booking.com” and similar marks can be trademarked).
[ix] See id. (describing 15 U.S.C. 1064(3) which illustrates the Lanham Act’s focus on consumer perception).
[x] See Booking.com B.V. v. Matal, 278 F.Supp.3d 891, 898 (E.D. Va. 2017) (stating Booking.com submitted evidence to the District Court for the Eastern District of Virgina, not originally submitted to the PTO and the PTO’s TTAB, “a “Teflon survey” which . . . is the most widely used survey format for measuring consumer opinion in a genericness challenge.”); see also USPTO at 140 U.S. at 2303 (2020) (stating “[r]elying in significant part on Booking.com’s new evidence of consumer perception, the District Court concluded that “Booking.com”—unlike “booking” is not generic.”); see also USPTO 140 U.S. at 2306 (2020)(stating “[a]s the PTO and the dissent elsewhere acknowledge, only one entity can occupy a particular Internet domain name at a time, so [citing Brief of Petitioners at 40] “a consumer who is familiar with that aspect of the domain name system can infer that BOOKING.COM refers to some specific entity.”); see also USPTO 140 U.S. at 2308 (2020) (stating, “and the PTO fails to explain how the exclusive connection between a domain name and its owner makes the domain name a generic term all should be free to use. That connection makes trademark protection more appropriate, not less.”)
[xi] See USPTO 140 U.S. at 2304 (2020) (stating that whether a “generic.com” is generic depends on consumer perception); see also USPTO 140 U.S. at 2306 (2020) (stating that the domain name is a source identifying characteristic).
[xii] See USPTO 140 U.S. at 2303-2304 (2020) (describing the District Court’s determination, and the Court of Appeals affirmation of its judgement, that the evidence Booking.com provided refers to its services).
[xiii] USPTO 140 U.S. at 2306 (2020).
[xiv] Id. at 2309.
[xv] Id. at 2313.
[xvi] Id. at 2309.
[xvii] See USPTO 140 U.S. at 2313 (2020) (stating “Similarly, “Booking, Inc.” may not be trademarked because it signifies only a booking company. The result should be no different for “Booking.com,” which signifies only a booking website.”); see also USPTO 140 U.S. at 2310(2020) (stating, “There are also “generic” terms, such as “wine” or “haricuts.” They do nothing more than inform the consumer of the kind of product that the firm sells. . . [a] generic term is not eligible for use as a trademark.”)
[xviii] See USPTO 140 U.S. at 2310(2020) (stating “A generic term is not eligible for trademark. That principle applies even if a particular generic term ‘ha[s] become identified with a first user’ in the minds of the consuming public.”).
[xix] See USPTO 140 U.S. at 2312 (2020); see also USPTO 140 U.S. at 2310-2311(2020) (describing the holding in Goodyear’s Rubber Mfg. Co. v. Goodyear Rubber Co., 128 U.S. 598 (1888), which said that adding “company” to a generic name is not protectable).
[xx] USPTO 140 U.S. at 2312 (2020).
[xxii] Id. at 2311.
[xxiii] See USPTO 140 U.S. at 2313 (2020) (stating “[e]vidence of such an association [ associating the mark to the source], no matter how strong, does not negate the generic nature of the term”).
[xxv] See USPTO at 140 U.S. at 2314 (2020).
[xxviii] USPTO at 140 U.S. at 2315 (2020).
[xxix] Robert C. Bird & Joel H. Steckel, The Role of Consumer Surveys in Trademark Infringement: Empirical Evidence from the Federal Courts, 14 U. Pa. J. Bus. L. 1013, 1015-1016 (2012).
[xxx] Dominic A. Azzopardi, Disarray Among The Circuits: When Are Consumer Surveys Persuasive?, 104 Iowa L. Rev. 829, 839 (2019).
[xxxi] See USPTO, 140 U.S. at 2305.
[xxxii] See id. at 2304.
[xxxiii] See id. at 2305 (stating that the lower courts determined consumers do not perceive “Booking.com” as a class of goods); see also Booking.com B.V. v. USPTO, 915 F.3d 171, 178 (4th Cir. 2019) (stating the district court found the consumer survey submitted showed that 74.8% of consumers provided “Booking.com” is not generic).
[xxxiv] USPTO 140 U.S. at 2313 (2020) (statement by J. Breyer) (“But it is possible for a generic term to achieve association—either because that producer has enjoyed a period of exclusivity in the marketplace . . . or because it has invested money and effort in securing the public’s identification… .”).
[xxxv] See USPTO 140 U.S. at 2313 (2020).