U.S. Supreme Court Talks Domain Names & Trademarks

Booking.com Decision and the Limitations of the TM

[Webwork]

Supreme Court decision .pdf here: [supremecourt.gov ]

SUPREME COURT OF THE UNITED STATES
Syllabus
UNITED STATES PATENT AND TRADEMARK OFFICE
ET AL. v. BOOKING.COM B. V.
CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR
THE FOURTH CIRCUIT
No. 19–46. Argued May 4, 2020—Decided June 30, 2020
A generic name—the name of a class of products or services—is ineligible
for federal trademark registration. Respondent Booking.com, an enterprise that maintains a travel-reservation website by the same
name, sought federal registration of marks including the term “Booking.com.” Concluding that “Booking.com” is a generic name for online
hotel-reservation services, the U. S. Patent and Trademark Office
(PTO) refused registration. Booking.com sought judicial review, and
the District Court determined that “Booking.com”—unlike the term
“booking” standing alone—is not generic. The Court of Appeals affirmed, finding no error in the District Court’s assessment of how consumers perceive the term “Booking.com.” The appellate court also rejected the PTO’s contention that, as a rule, combining a generic term
like “booking” with “.com” yields a generic composite.
Held: A term styled “generic.com” is a generic name for a class of goods
or services only if the term has that meaning to consumers. Pp. 6–14.
(a) Whether a compound term is generic turns on whether that term,
taken as a whole, signifies to consumers a class of goods or services.
The courts below determined, and the PTO no longer disputes, that
consumers do not in fact perceive the term “Booking.com” that way.
Because “Booking.com” is not a generic name to consumers, it is not
generic. Pp. 6–7.
(b) Opposing that determination, the PTO urges a nearly per se rule:
When a generic term is combined with a generic Internet-domainname suffix like “.com,” the resulting combination is generic. The rule
the PTO proffers is not borne out by the PTO’s own past practice and
lacks support in trademark law or policy. Pp. 7–14.
(1) The PTO’s proposed rule does not follow from Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U. S. 598. Goodyear, the PTO maintains, established that adding a generic corporate
designation like “Company” to a generic term does not confer trademark eligibility. According to the PTO, adding “.com” to a generic term—like adding “Company”—can convey no source-identifying
meaning. That premise is faulty, for only one entity can occupy a particular Internet domain name at a time, so a “generic.com” term could convey to consumers an association with a particular website. Moreover, an unyielding legal rule that entirely disregards consumer perception is incompatible with a bedrock principle of the Lanham Act:
The generic (or nongeneric) character of a particular term depends on
its meaning to consumers, i.e., do consumers in fact perceive the term
as the name of a class or, instead, as a term capable of distinguishing
among members of the class. Pp. 8–11.
(2) The PTO’s policy concerns do not support a categorical rule
against registration of “generic.com” terms. The PTO asserts that
trademark protection for “Booking.com” would give the mark owner
undue control over similar language that others should remain free to
use. That concern attends any descriptive mark. Guarding against
the anticompetitive effects the PTO identifies, several doctrines ensure
that registration of “Booking.com” would not yield its holder a monopoly on the term “booking.” The PTO also doubts that owners of “generic.com” brands need trademark protection in addition to existing
competitive advantages. Such advantages, however, do not inevitably
disqualify a mark from federal registration. Finally, the PTO urges
that Booking.com could seek remedies outside trademark law, but
there is no basis to deny Booking.com the same benefits Congress accorded other marks qualifying as nongeneric. Pp. 11–14.

[Webwork]

The main operative logic and language of the court's decision:

The PTO’s principal concern is that trademark protection for a term like “Booking.com” would hinder competitors.
But the PTO does not assert that others seeking to offer online hotel-reservation services need to call their services
“Booking.com.” Rather, the PTO fears that trademark protection for “Booking.com” could exclude or inhibit competitors from using the term “booking” or adopting domain names like “ebooking.com” or “hotel-booking.com.” Brief for Petitioners 27–28. The PTO’s objection, therefore, is not to exclusive use of “Booking.com” as a mark, but to undue control over similar language, i.e., “booking,” that others should remain free to use. That concern attends any descriptive mark. Responsive to it, trademark law hems in the scope of such marks short of denying trademark protection altogether. Notably, a competitor’s use does not infringe a mark unless it is likely to confuse consumers. See §§1114(1), 1125(a)(1)(A); 4 McCarthy §23:1.50 (collecting state law). In assessing the likelihood of confusion, courts consider the mark’s distinctiveness: “The weaker a mark, the fewer are the junior uses that will trigger a likelihood of consumer confusion.” 2 id., §11:76. When a mark incorporates generic or highly descriptive components, consumers are less likely to think that other uses of the common element emanate from the
mark’s owner. Ibid. Similarly, “in a ‘crowded’ field of lookalike marks” (e.g., hotel names including the word “grand”),
consumers “may have learned to carefully pick out” one mark from another. Id., §11:85. And even where some consumer confusion exists, the doctrine known as classic fair use, see id., §11:45, protects from liability anyone who uses a descriptive term, “fairly and in good faith” and “otherwise than as a mark,” merely to describe her own goods. 15 U. S. C. §1115(b)(4); see KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U. S. 111, 122–123 (2004).
These doctrines guard against the anticompetitive effects the PTO identifies, ensuring that registration of
“Booking.com” would not yield its holder a monopoly on the term “booking.” Booking.com concedes that “Booking.com” would be a “weak” mark. Tr. of Oral Arg. 66. See also id., at 42–43, 55. The mark is descriptive, Booking.com recognizes, making it “harder . . . to show a likelihood of confusion.” Id., at 43. Furthermore, because its mark is one of many “similarly worded marks,” Booking.com accepts that close variations are unlikely to infringe. Id., at 66. And Booking.com acknowledges that federal registration of “Booking.com” would not prevent competitors from using the word “booking” to describe their own services. Id., at 55.

[tangor]

A win in one way, a win in another. Acknowledges that weak domain names can be copyrighted, and at the same time suggests that those using generic words do have some expectation to avoid any "infringement" claims.

[RedBar]

I have to admit I'm not too sure what it means, definitely need to read again and understand the "nuances" or am I missing something basic?

[Webwork]

Well, one of the leading UDRP attorneys has this to say:

John Berryhill
@Berryhillj
23h
If anyone wants to know the impact of the Booking .com decision on UDRP's: It's 4:30 PM, and I just received a supplement in a "dictionary word" UDRP dispute citing it as hot news!

[twitter.com ]

I suspect the USPTO was attempting to lighten it's load OR provide some clarity to an unending stream of applicants whose applications for trademark exclusivity incorporated generic words or common phrases. It MAY have desired a "bright line standard" ~~ "You simply can NOT acquire exclusive rights to generic word-marks as domain names", but instead got an option that laid out the rationale for granting such marks...in limited circumstances...for limited purpose...with limited vitality (limited right to exclude others from embedding the TM "word" in their TM).

Even though the S.C.'s option provides a measure of "analytical clarity" I suspect there will be a $hitstorm of half-baked attempts to assert claims to generic domains, to claim exclusivity based on existing registrations, perhaps a rush to register TMs in an effort to stake out previously wide open spaces and countless other efforts to "favorably misinterpret" the Supreme Court's opinion.

I'm in "eyes wide open mode". I hold more than a few generic domains.

Fortunately, I also hold a law degree and a license to use it. :-/ ;)