Amici Back Booking.com in Supreme Court Case Against USPTO

By Nancy Braman
February 25, 2020

“The analysis of consumer perception of a composite mark’s root and suffix individually is not the same as analyzing the mark as a whole.” – amicus brief of Survey Scholars & Consultants

https://depositphotos.com/45773813/stock-photo-girl-lying-by-the-pool.htmlAs argument nears in the Supreme Court battle between Booking.com and the United States Patent and Trademark Office (USPTO), 12 parties have now filed amicus briefs in support of Booking.com. Among the amici are the Intellectual Property Owners Association (IPO), the International Trademark Association (INTA), and the Survey Scholars and Consultants (SSC).

Intellectual Property Owners Association

IPO is urging the Supreme Court to find that generic terms added to generic top-level domains (TLDs) are not per se generic and are thus eligible for trademark protection under certain circumstances.

Generic terms are ineligible for trademark protection because this would potentially create a monopoly over a term that is already commonly used. However, descriptive terms, which describe the characteristics of a good or service, can be trademarked where secondary meaning has been acquired. More plainly put, descriptive terms are eligible for protection where the mark has become distinctive of the applicant’s good or product. IPO argues that even where domain names may contain generic component parts, they should still be eligible for protection. IPO believes that these terms should be analyzed to determine whether they have achieved inherent distinctiveness or secondary meaning from commercial use, and if so, they should be protected as trademarks. This approach, argues IPO, is consistent with analysis conducted by the USPTO and courts of appeals, and is not inconsistent with Supreme Court precedent.

The brief adds that permitting trademark protection for certain “generic.com” terms will not automatically result in overly broad marks because: 1) each generic component of the term still will be able to be freely utilized by others and 2) enforcement of the mark will still fall under the same “likelihood of confusion” standard as other marks.

The International Trademark Association

INTA’s brief begins by stating that it is seriously concerned with the USPTO’s arguments in support of blocking the mark’s registration and therefore opposes the proposed per se rule. Each trademark case is fact-based, argues INTA; therefore, decisions on whether to classify a term as generic should be made carefully because of the potential consequences of genericism for both brand owners and consumers. Because it is difficult to draw a line between generic and descriptive marks, imposing a per se rule would prevent consumer perception from being taken into consideration during mark evaluation. A per se rule, argues INTA, could negatively impact more than 1500 generic top-level domains (gTLDs) while unpredictably interacting with second level domains (SLDs) different from those domain names ending in “.com.”

Furthermore, INTA contends that all admissible evidence should be considered when determining whether a term is generic, and those cases that have excluded consumer perception “Teflon surveys” have failed to apply the Lanham Act’s primary-significance standard that applies to all marks, not just coined terms. This test requires the trier of fact to determine which meaning of a term is primary when it has both generic and brand meanings. Ignoring it, argues INTA, is ignoring the will of Congress, which intended survey evidence to be admissible in determining primary significance of marks challenged as generic. The Supreme Court has never held that consumer perception surveys cannot be considered to evaluate claims of genericness and has even held that evidence of consumer perception is relevant in distinguishing between generic and descriptive claims.

Lastly, INTA argues that domain names are more comparable to telephone numbers and geographic locations and that modern case law therefore provides a better legal framework than the pre-Lanham Act case Goodyear’s Rubber Mfg. Co. v. Goodyear Rubber Co, which discusses business designations. This is because domain names are registered to a single owner and represent a unique location. Multiple cases have classified geographic locations and telephone numbers as descriptive, rather than generic, and thus eligible for protection upon proof of acquired distinctiveness. INTA argues that domain names should be afforded the same protection.

Survey Scholars & Consultants

The Survey Scholars & Consultants (SSC) teach at colleges and universities throughout the United States and include consultants who analyze consumer perceptions specifically in the area of trademark law. The specific amici include Cornerstone Research, NERA Economic Consulting, Professor Dominique M. Hanssens of the University of California, Professor Barbara E. Kahn of the University of Pennsylvania, President George Mantis of Mantis Group, President Sara Parikh of Willow Research, Professor Dave Reibstein of the University of Pennsylvania, Professor Joel Steckel of New York University, and Professor Ronald T. Wilcox of the University of Virginia.

Their brief asks the Court to view domain names differently from all other trademarks by adopting a new rule just for them. SSC argues that the government is incorrect in determining that if a domain name’s root (SLD) and suffix (TLD) are each generic when viewed in isolation, the term itself if generic. The analysis of consumer perception of a composite mark’s root and suffix individually is not the same as analyzing the mark as a whole, contends SSC. Although the court should treat domain names like every other type of mark, SSC believes that consumer perception should be assessed on a case-by-case basis using survey evidence and market evidence of consumer usage and perception. SSC explains that Teflon surveys are the most accepted form of survey for testing genericness, because the participants are given a mini-course about the difference between generic and brand terms and are then given a mini-test to confirm their understanding. Furthermore, SSC argues that consumers did not begin using the term “booking.com” in Google searches until after Booking.com adopted the term, which is evidence that it was not pre-existing.

Additional amicus briefs have been filed by: Trademark and Internet Law Professors, Salesforce.com, Inc. and The Home Depot, Inc., The Association of Amicus Counsel, Professor Peter N. Golder and other Marketing Academics, the Internet Commerce Association, the New York Intellectual Property Law Association, Coalition of .Com Brand Owners, and the Boston Patent Law Association.

Image Source: Deposit Photos
Photography ID: 45773813
Copyright: prykhodov 

 

The Author

Nancy Braman

Nancy Braman is a freelance legal researcher for IPWatchdog. She is also a U.S. Registered Patent Agent and a 2L at the University of New Hampshire Franklin Pierce School of Law, where she serves as the Communications Director of the UNH Patent Law Forum. Her research background in Molecular and Microbiology brings her to the realm of patent law, and in her spare time, she also works as an Alaska commercial sockeye fisherman.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 21 Comments comments.

  1. Anon February 25, 2020 7:39 am

    A general question, previously asked but not yet answered: would not the portion of “.com” need be disclaimed?

    Or in other words, recognizing the argument here that a totality of a mark should not merely be considered an additive total of individual elements, is not the general treatment with trademarks TO be required to disclaim some elements, and as such, should not any attempt to use a portion such as “.com” (which is purely functional and in fact a common necessity — hallmarks of something outside the bounds of Trademark) be denied?

    Trademark is not my bailiwick, so I recognize that my logic may be flawed, and would appreciate counter points here.

  2. Eileen McDermott February 25, 2020 8:27 am

    Hi Anon – if you read the PTO’s petition it explains that the examiner required Booking.com to disclaim both portions of the mark – only the design elements were deemed registrable, since both “booking” and “.com” are generic terms. Booking.com however is arguing that the mark (both word elements taken as a whole) has met the standard for acquired distinctiveness/ secondary meaning, as proven by survey evidence. I’m not sure that answers your question.

  3. Night Writer February 25, 2020 11:23 am

    booking.com has it right. It has taken on a secondary meaning. We all know that booking with the “.com” at the end means a website that does bookings and that it is a separate company.

  4. Anon February 25, 2020 12:04 pm

    Thanks Eileen – it might (and I might not know enough to recognize it).

    To my view, the argument about acquired distinctiveness CANNOT reach something that must be disclaimed.

    One may argue that something should or should not be disclaimed. I “get’ that.

    I do not get that having to have to disclaim “.com” (for the moment, only focusing on that piece), that one can “do” anything further with the element that must be disclaimed.

    In other words, I am not sure that I buy the argument that the first portion (purposely left open as to being disclaimed or not) moves the needle WHEN the second portion must be disclaimed in ANY “but when you put the two things together” argument. My (perhaps very) limited understanding is that when one disclaims a portion, the portion so disclaimed can have NO probative effect on any further evaluation. It’s out. It’s done. It’s not ‘part of’ anything, let alone any argument that by including that item back in (if only for a ‘sum total’ evaluation), the full desired mark is permissible.

    As I note – I can be correctly wrong with this view.

  5. Anon February 25, 2020 1:30 pm

    Night Writer,

    Your view cannot be correct.

    Otherwise the mere fact that “.com” must be a singular entity (because that’s how the WWW works), would open ALL marks to be “open” to anyone (and would generate a ‘gold rush’ untowards ANY reasonable view of impact of existing marks holders — especially with the:

    more than 1500 generic top-level domains (gTLDs) while unpredictably interacting with second level domains (SLDs) different from those domain names ending in “.com.”).

    The Domain Name system and Trademark do NOT interact as your argument makes necessary.

  6. angry dude February 25, 2020 1:45 pm

    They pooped all over 230-year old US Patent System and on copyrights too and now they are moving over to trademarks ???

    Enough is enough

  7. Curious February 25, 2020 1:52 pm

    I’m no trademark attorney (a little bit of TM work was foisted upon me very early in my career), but I think this is going to be a hard sell.

    The “booking” aspect appears to be generic as it describes what the company does. The “.com” aspect also appears to be generic as it refers to a company operating on the internet. The combination refers to a booking company that is on the internet — seems generic and very descriptive to me.

    All that being said, if you can show, by substantial evidence, that a term has acquired a secondary meaning, then it can be eligible to be trademarked. The more generic the term, the more secondary meaning it needs to have acquired.

  8. Night Writer February 26, 2020 11:29 am

    @5 Anon “Your view cannot be correct.”

    Except it is correct. How do I know? By what I think of when I see “booking.com.”

    I immediately think this is a website/company that does bookings and not a generic name.

    That is right that “.com” has instantly created in our minds these secondary meanings. I think there are other cases of this.

    Space X for example, Put the X on the end of anything and you get a company that is trying to be excellent in the generic name in the front.

    Anon, look at the survey. It matches how I feel about it.

  9. Anon February 26, 2020 1:54 pm

    Night Writer,

    Sorry, but you absolutely miss the point about “cannot be correct.”

    I certainly “get” that you immediately think of “x” – but that is ONLY a function of the driver that the WWW ONLY works with one address being to a singular entity.

    You cannot be correct because you have not bothered (at all) to take the next logical step and carry forward what this would mean for all marks.

    The “.com” does NOT create the separateness under Trademark law that the real separateness under the way the WWW works does.

    ANY depending on a survey does NOT answer the question I presented in the first instance (you are NOT paying attention).

    I am NOT denying that for ANY combination of any term with a second term of “.com” COULD create what the survey shows and the existence of a secondary meaning.

    That is entirely NOT the point of my question.

    That is a circular ex post facto justification for allowing something that disclaimer in and of itself — combined with WHY the “.com” must be disclaimed carries forward for trademarks under trademark law.

    Your view would absolutely require every single Mark owner to join (AND BEAT) the massive ‘land rush’ throughout EVERY gTLDs and the (nigh potential limitless) SLDs that “must exist” (per your view) because every single new “first term” is necessarily a SEPARATE item because of the way WWW works. Such a physical working system is simply run by (and under) a different set of laws than Trademark law, and I have seen NO legal reasoning provided that would not just permit such, but mandate such an expenditure to protect ANY established mark.

  10. Night Writer February 27, 2020 6:04 am

    @9 Anon

    This says it all regarding the legal standard. I agree with IPO because it is my experience that the “.com” at the end can add secondary meaning. You keep rattling on about peripheral issues.

    “IPO is urging the Supreme Court to find that generic terms added to generic top-level domains (TLDs) are not per se generic and are thus eligible for trademark protection under certain circumstances.”

  11. Anon February 27, 2020 6:29 am

    I know what you believe and what you agree to.

    THAT is the peripheral issue here. Let me remind you that I set the issue to which I am talking about at post 1 (augmented by posts 4,5 and 9).

    I have drawn a distinction. Your belief and your statement have ignored that distinction. Continuing to base your belief with an ignored basis means that YOU are not addressing MY issue.

    Please try to address my issue. Do not repeat yourself as to what your belief is when that belief does not take into account the point I present — or at least try to answer my counters to your assertion.

    The only “prattling on” is directly due to your not answering the counters put to you. Answer them, and the “prattling” disappears.

  12. Anon February 27, 2020 7:39 am

    And let’s take another look at what you just posted at 10, which I presume is from IPO (emphasis added):

    IPO is urging the Supreme Court to find that generic terms added to generic top-level domains (TLDs) are not per se generic and are thus eligible for trademark protection under certain circumstances.”

    That statement has as its subject the focus of only a part of the whole. The subject of focus for IPO is a battle whether the root item preceding the “.com” ITSELF may or may not be considered generic per se.

    My point does not touch that.

    I don’t have qualms with the preceding portion — in and of itself being something that may be generic, but also may be something that has acquired a secondary meaning in itself.

    But the attempted bootstrap here is that the secondary meaning is not coming from the preceding portion.

    But my point is more nuanced than that.

    My point is that in this instance, the secondary meaning is coming from the universal meaning — the very function itself — of an added item. There is no other ‘adder’ to support any differentiating ‘acquiredness’ than the function itself.

    That type of bootstrap should fail.

    Let me illustrate a nuance with the following:

    The word “red” is generic in that it is a color. The word “red” as a mark in and of itself may or may not — as the circumstances present themselves — rise to having an acquired distinctiveness for a particular item for a particular source. For this example, let’s presume Red (the perfume) has acquired such a distinction.

    Do you see how this is different than what I am talking about?

    Let’s revisit “Red.”

    Now instead of perfume, let’s say I want a mark and I have two elements to the mark, one of which is “red.” The Office may require me to disclaim the portion of the mark “red” as generic.

    Up to this point, this should sound familiar.

    Let’s say the second portion itself is also generic.

    This is where it gets interesting.

    I can well see that a second portion — itself generic — can certainly help a first portion that may or may not be considered generic ‘boost’ the combined mark to be NOT generic.

    In our example, let’s use ‘bull’ as the second ‘boosting’ generic term.

    Certainly, the full term of “Red Bull” readily brings to mind an acquired meaning.

    My concern is not even on this type of “generic” boosting another “generic” in combination.

    Instead, my concern is with an attempt to use a second generic as the ‘boosting mechanism’ for something that not only IS but MUST BE associated with that second generic because the “reason provided” is a functional necessity of that second term.

    In this nuance, a second generic of “bull” and a second generic of “.com” simply are NOT equal.

    What is even more glaring here though (and to this point I have previously — and expressly — left aside), is that the first generic term suffers a flaw that is a typical roadblock to any attempt at an acquired meaning: the word is descriptive of the very generic action of the direct word itself. For ANY such first term, the ‘boost’ necessary may well be unobtainable.

    To me, it is almost galling then — and quite apart from any survey — that the legal foundation for what the boost to the first term is being provided solely by the necessary functional nature of the second term.

    As I note, a secondary term of “.com” is different than a secondary term of “bull” and attempting to use the very weakness that makes such a secondary term different as the offered boost to a first term simply does not cut it for me — from a legal approach.

    To this nuanced legal theoretical position, I have furthered offered the very real and very pragmatic example that a Mark holder (any Mark holder) would be faced with dilution and enforcement issues if the very particular and necessarily functional (and universally so) second term of the profuse number of possible gTLDs and SLDs would need to be obtained in order to protect a first term (whether or not that first term has achieved an acquired distinctiveness on its own for other reasons). That is to say, returning to my original position in that I have permitted a first term to overcome a generic-ness with an acquired secondary meaning, even such a first term on its own would be faced with an unfair requirement to protect its mark by seeking secondary marks of its mark and the purely and necessary functional second portion for what that second portion universally is understood to do.

    The necessary parallel to an existing Mark holder of NOT having to be required to protect its mark by not having to engage and register the panoply of WWW secondary terms is that such secondary terms cannot provide ANY boost to a first term. A first term simply requires some other boost to its separate attainment.

    With that nuanced understanding in hand (and please let me know both that you understand the nuance AND that you are willing to consider that nuance, even if only for argument’s sake), the attempt here between “booking” and my example of “red” is indeed stark.

    It is NOT that the IPO position, focusing on the first term, is in itself incorrect. Just as “red” may overcome its sense of being generic, so too may “booking.”

    But “booking” WON’T overcome that sense by relying on the direct nature of the word itself and ONLY the (“forbidden”) path of the purely and necessarily so “.com” attempted boost.

    That’s no bull.

  13. Night Writer February 27, 2020 9:41 am

    @11 Anon

    Again, I am into one of these circular discussions with you. You do not read what other people write and incorporate into your arguments.

    You have to read my arguments and respond to them. They are a response to what you said. My arguments are 100 percent based on TM law.

  14. Anon February 27, 2020 11:07 am

    Sorry Night Writer, but between you and I, you are the one not responding to the points presented.

    Your reply here is not only non-responsive, it is entirely conclusory and merely works backward from a survey without addressing any of the nuance provided.

    Expand your mind just a little and engage the points provided please.

  15. Night Writer February 27, 2020 12:04 pm

    Anon >>Instead, my concern is with an attempt to use a second generic as the ‘boosting mechanism’ for something that not only IS but MUST BE associated with that second generic because the “reason provided” is a functional necessity of that second term.

    This appears to sum up your argument. Frankly, I don’t think it matters. What matters in TM is what happens inside people’s head. What happens with “bookings” and “.com” is that a new secondary meaning is formed. The other issues you have should not matter. The issues are likely-hood of confusion and secondary meaning.

    I think this is most similar to the way when people at an “X” at the end that it instantly creates a secondary meaning to a generic term.

    I get your point. I get it. But it simply doesn’t matter. Your argument then goes into to policy reasons that are way down on the list of what should matter.

    I do not see any problems with this at all. Note too that “.com” does not instantly create secondary meaning with all terms. red.com for example probaby does not give that instant secondary meaning. Nor does bull.com.

    But “booking.com” does probably because “booking” and automation with the Internet go together like “Space” and “X”.

    No more arguing on this point. I am done. You can have the last word.

  16. Anon February 27, 2020 3:46 pm

    Thank you Night Writer for at least starting.

    There’s more gold there though.

    Try at least through:

    The necessary parallel to an existing Mark holder of NOT having to be required to protect its mark by not having to engage and register the panoply of WWW secondary terms is that such secondary terms cannot provide ANY boost to a first term. A first term simply requires some other boost to its separate attainment.

  17. Anon February 27, 2020 7:49 pm

    If “Booking.com” gets their mark,

    Can a rival (new or existing) obtain:

    Booking:
    .net
    .biz
    .travel
    .org
    .tel
    .cheap
    .cruises

    and on and on and

    (see — at least — https://www.marcaria.com/ws/en/register/domains/gtld-available-multiple-search )

  18. Night Writer March 1, 2020 2:39 pm

    @17

    The answer to the question of the other domain suffixes is likely with what is in people’s heads.

    I don’t think the other suffixes create the differentiation and secondary meaning that .com does.

    I would fall back to first principles that TM law is a lot about secondary meaning and how people think about these words matter.

    .com together with something like “booking” seems to create a special secondary meaning which is backed up by the surveys.

    bookings.tel — no. booking.org — no.

    You have to go with what it creates in people’s heads. That is the basis of secondary meaning.

  19. Anon March 2, 2020 6:53 am

    I would fall back to first principles

    That is what I am asking for.
    That is NOT what you are doing.

    I do not think that you are grasping the nuance with the profuse number of possible gTLDs and SLDs. Perhaps you are seeing this as merely a peripheral item, and have not really thought through the implications (as I have provided). These ARE the types of things that need be brought into the application of first principles. These ARE real world effects and strike at the heart of the several amici that propose a different view of the several portions of the compound mark.

    Note as well that my position DOES take into account (and even provides for a certain level of agreement) with the First Principles of a first portion overcoming generic-ness. My position is more nuanced (and is bi-directional) as to whether or not it would be proper to allow the ‘something more’ that created the differentiation to come from an item of universal application that necessarily creates a unique entity ‘source’ designation.

    I might have to dive into the case law that is proposed to distinguish from the pre-Lanham Act case Goodyear’s Rubber Mfg. Co. v. Goodyear Rubber Co — especially the telephone number aspect (as opposed to the merely regional aspect).

  20. Anon March 2, 2020 7:24 am

    bookings.tel — no. booking.org — no.

    And again — I do not get the sense that you have picked up the nuance and answered my question.

    On this point, let’s use “.travel” (instead of “.tel” or “.org,”).

    In your world, “Bookings.com” has been allowed to have been entered.

    Ok.

    Now in my proviso, Bookings.com does not ‘jump into the land-rush’ in order to grab any of the substantial plurality of other singular-source-locating WWW devices.

    Why would we want to make it necessary to do so?

    Someone else grabs “bookings.travel.”

    This someone else spends an enormous amount of money and has a campaign that goes viral, and places their business in the mind’s eye.

    This newcomer then turns and files for the “bookings.travel” Mark (and has a parallel to the logic that you rest on with “Bookings.com”) — that is, they can show survey results based on their viral campaign.

    By your logic, the second comer should get the second Mark. After all, their viral campaign has made them ‘in the mind’ and they have this backed up with surveys.

    In such an instance, does the holder of the Mark “Bookings.com” have any problems? Would they have any legitimate legal issues?

    I can easily think of several.

    Now, let’s entertain my nuance provided above. I DO allow a compound term to be able to both disclaim the ‘.com’ portion and BY OTHER means develop a true differentiator of a first portion as being challenged as “generic” — separate from the WWW aspect. One may say that they have earned the compound mark by other than the necessarily WWW functionality that universally drives singularity of source.

    Since that Mark holder is NOT dependent on the particular WWW functional driver (having shown that their developed secondary meaning does not depend on that factor), one may be able to say that a mere change in that functional driver (Second portion of the compound mark) should not provide competitors to come in and “piggyback” off of the first Mark holder’s goodwill.

    So let me now cycle back to you and see if I understand how you are applying first principles.

    Am I using your application correctly with the notion that taking any first portion whatsoever and merely adding different second portions MAY provide the opportunity (upon a showing per survey for example) to some second entity to obtain its own mark for the same first portion and different second portion?

    I think that your ‘all too quick’ dismissal of the ‘.tel’ and ‘.org’ examples presumed that no survey results would ever be possible — but that’s not the question being presented. You really haven’t applied first principles in these quick “No” responses as much as you have presumed a conclusion (that there is no survey evidence), rather than looked at the bigger picture of what WOULD be possible.

    I posit that the bigger picture is NOT peripheral. In fact, the bigger picture is the more interesting legal picture, and sets a better lens to look at any case, including the present case.

  21. Anon March 2, 2020 5:35 pm

    The INTA brief vis a vis ‘telephone numbers’ gets a point for being inte11ectually honest enough to state that the (case) law on this point is mixed, that their position is NOT unequivocally the controlling legal position, even as they express the desire that it should be.