“Treating ‘generic.com’ terms as protectable trademarks would permit first adopters to leverage the fact that only one entity at a time can hold the contractual rights to a particular domain name into additional trademark-law benefits that would not be available to brick-and-mortar ‘Generic Inc.’ equivalents.”
On March 13, the United States Patent and Trademark Office (USPTO) filed a reply brief urging the Supreme Court to reverse a judgment of the U.S. Court of Appeals for the Fourth Circuit that held BOOKING.COM to be a registrable trademark. The case was set to be argued earlier this week, but was postponed due to the coronavirus pandemic. Fifteen parties have filed amicus briefs in the case, most of those in support of Booking.com.
In response to Booking.com’s brief of February 20, the USPTO primarily argued that, 1) Goodyear Co. v. Goodyear Rubber Co. remains good law and resolves the question presented in the present case, 2) Sound trademark policy supports the conclusion that adding a top-level domain, such as .com, to a generic term does not lead to a protectable trademark, and 3) Booking.com’s survey evidence does not provide a sound basis for treating the term “Booking.com” as a registrable trademark.
Goodyear Remains Good Law and is Applicable in this Case
The USTPO responded to Booking.com’s argument that even if Goodyear was good law, it did not apply to this case, by noting that the addition of “.com” only conveys that the “would-be-rights-holder” operates a commercial website, which is no more entitled to a federal trademark than “Booking Company” or “Booking Inc.” would be. The USPTO further noted that the fact that only one entity can hold the rights to a given domain name, as Booking.com argued distinguished this case from Goodyear, only strengthens the rationale of Goodyear. In addition, the USPTO pointed out that the USPTO and every court of appeals to consider the issue, other than the Fourth Circuit, have acknowledged Goodyear’s applicability to “generic.com” terms. Rather, citing Advertise.com, Inc., 616 F.3d at 981, the USPTO noted that “other courts have warned of the harms that would result if the fact that such terms ‘have become identified with a first user’ were deemed a sufficient basis for registration.”
The USPTO also responded to Booking.com’s argument that the Lanham Act overruled Goodyear in stating that Booking.com’s approach to implied abrogation violates the principal that statues are not to interpreted as changing the common law unless the change is clear, which is not the case in this instance. For example, Congress’s use of the words “combination effect” in the Lanham Act would be an “extremely subtle” way of overturning Goodyear. Further, USPTO noted that even if the Supreme Court in Goodyear used the term “descriptive” in modern sense, as contended by Booking.com, it would not affect the present case because Goodyear’s relevance lies in its holding that adding a word such as “Company” or “Inc.” to an unprotectable word does not create a protectable mark. The USPTO’s argument’s also included remarks that the Lanham act did not overrule Goodyear by adopting the Primary-Significance test, which originated in Kellogg Co. v. National Biscuit Co. and established that in order to establish a trade name an owner must show that “the primary significance of the term in the minds of the consuming public is not the product but the producer.” Thus, the USPTO concluded that Booking.com did not identify any sound basis for the conclusion that the Lanham Act overruled Goodyear.
Adding a Top-level Domain to a Generic Term Does Not Lead to a Protectable Trademark
The USPTO argued that “Treating ‘generic.com’ terms as protectable trademarks would permit first adopters to leverage the fact that only one entity at a time can hold the contractual rights to a particular domain name into additional trademark-law benefits that would not be available to brick-and-mortar ‘Generic Inc.’ equivalents.” The USPTO also argued that Booking.com’s recent comments the it would not use it’s trademark registration to prevent competitors from using similar domain names such as “hotelbooking.com” and “eurobookings.com” reinforces the conclusion that BOOKING.COM is not a protectable mark. Further, the USPTO noted that Booking.com incorrectly suggested that without trademark protection it would be defenseless against “unscrupulous businesses” using similar or misspelled marks. The USPTO responded that unfair-competition law would protect Booking.com from such businesses seeking to mislead customers.
The Office also said that Booking.com incorrectly argued that its registration and other “’Generic Company, Generic Inc., or Generic.com’ names would not ‘stymie competitors’ marketing and sales” because the USPTO has already registered many such terms. The USPTO explained that most of the generic examples cited by Booking.com were irrelevant. Further, “to the extent that trademark examiners have erred in permitting registration of some fraction of the marks in respondent’s brief and appendix, mechanisms exist for correcting those mistakes.” Thus, the USPTO noted that it would be improper for Booking.com to leverage any such examiner errors to overturn the Supreme Court’s precedent.
Survey Evidence Does Not Provide a Sound Basis for Treating “Booking.com” as a Registrable Trademark
The response brief argued that Booking.com’s survey results, and surveys in general, are “ill-suited to the specific contexts of ‘Generic Inc.’ and ‘generic.com’ terms,” because consumers are likely to infer that any particular ‘’generic.com’ term refers to a particular brand even without any prior awareness. The USPTO further noted that Booking.com’s “proposed per se rule” that all genericness inquiries must be determined by survey evidence is “inconsistent with the Lanham Act’s preservation of the distinction between generic terms, which are not eligible for trademark protection even upon a showing of secondary meaning, and descriptive terms, which are potentially registrable if secondary meaning is established.” In stating that Booking.com’s argument would effectively result in trademark protection for all “Generic Inc.” or “generic.com” terms where secondary meaning was demonstrated, the USPTO concluded that such a result “contravenes Goodyear and bedrock trademark-law principles.”
David Bernstein of Debevoise, who is co-counsel to Booking.com, told IPWatchdog in February that the case “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.”
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