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It took COVID-19 to spur the Supreme Court of the United States (SCOTUS) to embrace last century’s technology. In early May, 2020 the U.S. Supreme Court heard oral arguments by teleconference in Booking.com’s federal trademark case, live-streamed in real time (a SCOTUS first).

gavel in court

Booking.com is an online booking travel business. In Booking.com B.V. v U.S. Patent and Trademark Office, the Court will decide whether that company created a registrable trademark by combining

  • an unprotectable generic term (the word “booking”) with
  • an unprotectable generic top-level internet domain name (like “.com.”)

Asked another way, can you combine 2 generic words or phrases to create a new, protectable trademark?

Federal Trademark Basics

Under The Lanham Act (15 U.S.C. §§ 1051 et seq.), marks must be  “distinctive” to be protectable. Courts determine a mark’s strength by placing it into one of four categories of distinctiveness, in the following increasing order:

  1. generic
  2. descriptive
  3. suggestive
  4. arbitrary or fanciful

Also, marks in the last 2 categories (suggestive; arbitrary or fanciful) are considered inherently distinctive and entitled to trademark protection. Conversely, descriptive terms are protected only after proving certain elements; generic terms are never distinctive. See opinion in Booking.com, U.S. Court of Appeals, 4th Circuit (citing George & Co. v. Imagination Entertainment Ltd., 575 F.3d 383 (4th Cir. 2009)).

Here’s a helpful chart with specific examples:
Category Explanation Examples
generic A common name of the product or service in question

 

Generic words can never be appropriated by a single party as trademarks for the products or services they signify, since the public perceives and uses them solely as common nouns or terms. Generic words or phrases are not registrable or protectable in relation to the products or services they signify.

 

 

·      Clocks (for

timepieces)

 

·      Hamburgers (for meat patties)

descriptive Merely describes a product, or contains ingredients or attributes that are too weak to function as a trademark.

 

Merely laudatory terms such as “best” or “quality” also are generally not registrable.

 

However, what is initially a descriptive word may later become protectable as a trademark if it acquires “secondary meaning”. In other words, if a descriptive word is used and advertised exclusively as a trademark for a sufficient period of time, it may, in addition to having the primary meaning which describes the product, come to identify the mark as being associated with a single source of origin for that product.

 

 

 

Not Protectable: “Cold and Creamy” (for ice cream).

 

The words merely describe an attribute, feature, end result, or use of the product, and generally are not granted trademark protection.

 

_____________________

 

Protectable: However, “Sharp” (for televisions)

suggestive Hints at, or suggests, the nature of a product or service or one of its attributes, without actually describing the product or service.

 

Suggestive marks can possess an inherent element of sales appeal and require less education of the public than fanciful or arbitrary marks; therefore suggestive marks are entitled to less-extensive protection.

 

 

·    Neflix (for internet streaming services)

·    Airbnb (for matching homeowners with guests)

arbitrary or fanciful strongest end of the spectrum because it is inherently distinctive. Combines letters that have no inherent meaning – i.e., an invented word.

 

Requires bigger advertising effort to educate consumers to make the relationship between (i) the invented word and (ii) the product or service.

 

Enjoys the broadest scope of protection against 3rd-party use.

 

 

·      Rolex

·      Xerox

·      FedEx

·      Kleenex

·      Stridex

·      Blistex

Both Sides Have Persuasive Arguments
Government’s Position:

To resume, the US Patent and Trademark Office (USPTO) denied Booking.com a trademark. Saying that adding “.com” to a generic term like “booking” doesn’t turn the word into protectable intellectual property. “Booking” is merely a common word, and “.com” simply signifies what kind of internet domain the company has (as opposed to “.org” for a non-profit organization, or “.gov” for a governmental institution). Therefore, the USPTO says the company has no claim of distinction or ownership.

Two wrongs don’t make a right — nor does combining 2 common words create an enforceable trademark. Using a “.com” domain name in the digital world is no more distinct than a company using the abbreviation “Co.” in the physical world. The “.com” suffix was designed to generically identify commercial entities online, and that’s exactly what it is.

Booking.com’s Position:

Booking.com argues that its name has become distinctive, and surveys show that most consumers already associate the Booking.com name with that company. They therefore argue that Booking.com – comprised of 2 generic terms — has become unique.

A company cites persuasive examples of other trademarks based on combining otherwise generic terms, like “The Container Store”, “Dating.com”, and “Weather.com”.

Stay tuned. The Court’s decision is expected in the Summer, 2020.

What’s Your Brand? We’ll Help you Protect your Trademarks

You worked hard to develop and promote your business. As well as, use logos, colors, packaging, designs, catchy slogans, and clever names to sell your products and services. We know that’s hard work, for which you’ve invested significant time and money. Your uniqueness includes intellectual property – a valuable asset.

In sum, trust the experienced, caring trademark pros at 180 Law CoAiden Durham, Esquire, will make you a priority and put your mind at ease. We are seasoned professionals, and we know trademarks and branding! We will answer your questions, register your marks, and defend them against others’ misuse. Schedule a consultation to get started or email us confidentially at [email protected].

Want to learn more about intellectual property? Check out: Intellectual Property Rights Explained.