Booking.com Case Heats Up at Supreme Court

In November, the U.S. Supreme Court granted a petition for certiorari filed by the U.S. Patent and Trademark Office (USPTO) asking the Court to consider “Whether the addition by an online business of a generic top-level domain (“.com”) to an otherwise generic term can create a protectable trademark.” Booking.com filed its brief for the respondent in the case last week, arguing that “under the Lanham Act, the consumer is king,” and the fact that survey evidence has proven 74.8% of relevant consumers to consider BOOKING.COM a brand, rather than a generic name, “should end this case.”

In its July 2019 petition, the USPTO argued that the U.S. Court of Appeals for the Fourth Circuit’s holding that “.com” when added to “booking” was sufficient to make the term protectable as a trademark, “so long as the relevant public would understand the combination to refer to a specific business,” is contrary to “established principles of trademark law, and it conflicts with decisions of the Federal and Ninth Circuits, the only other courts of appeals that have considered the protectability of ‘generic.com’ terms.” The Federal Circuit has found in previous cases that marks including “HOTELS.COM” and “LAWYERS.COM” were not protectable “based on highly similar evidence,” said the petition.

Amicus briefs filed by a number of trademark scholars and by the American Intellectual Property Law Association warn against adopting per se rules and instead favor evaluating this issue on a case-by-case basis. The Electronic Frontier Foundation (EFF) filed a brief supporting the USPTO and arguing that “the Fourth Circuit’s decision was incorrect as a matter of law, upends decades of settled expectations, and contravenes the purposes of trademark law to the detriment of consumer rights and competition.”

In Booking.com’s February 12 brief the company contends that the Lanham Act’s “primary significance” test requires “ascertaining, based on evidence, whether relevant consumers primarily understand the mark as a whole as the name of a category of goods or services. Sometimes the evidence will establish that a Generic.com mark is generic; sometimes not.”

In the present case, Booking.com presented a report by statistician and survey research expert Hal Poret, who designed an industry-standard “Teflon survey” to measure whether consumers perceive BOOKING.COM as generic. “Poret controlled for ‘concerns that survey respondents might answer that any DOT-COM name is a brand’ by including Washingmachine.com, which has no associated brand, as a control,” said Booking.com’s brief.  “While 30% of respondents identified Washingmachine.com as a brand, “74.8% … identified BOOKING.COM to be a brand name.”

A second report by Dr. Sarah-Jane Leslie, a Princeton professor with expertise in linguistics, said that, “even if ‘booking’ and ‘.com’ were generic terms in isolation, consumers would not necessarily understand BOOKING.COM to refer to all hotel-reservation services.”

The company also showed evidence of its “reputation, marketing, and commercial success” to further its case.

More broadly, the brief explains that a finding for the USPTO could result in “a mass extinction event for registered trademarks,” since the Office has “spent decades registering marks that violate the government’s rule that a generic root term, coupled with ‘Company’ or ‘.com,’ can never be a trademark.”

David Bernstein of Debevoise is co-counsel to Booking.com at the Supreme Court. He told IPWatchdog that the firm is “looking forward to finally confirming that our client’s world-famous Booking.com trademark is entitled to a U.S. trademark registration.” He added:

This case, though, is also about much more – it presents an important opportunity for the Court to confirm that courts and the PTO must consider all relevant evidence, including surveys, in deciding whether marks like Booking.com, Ancestry.com Pretzel Crisps, The Episcopal Church, and innumerable other important trademarks (many of which are listed in the appendix to the brief) are generic or are potential brand names entitled to registration.

Arguments are set for Monday, March 23.