U.S. Patent & Trademark Office v. Booking.com B. V.

The Lanham Act makes distinctiveness turn on a mark’s ability to distinguish one producer’s goods or services from those of others. A generic term names the class, or genus, of goods or services and cannot function as a trademark. For a compound mark, however, the relevant inquiry concerns the meaning of the complete term, not the separate meanings of its components viewed in isolation.

Consumer perception is the central measure of whether a term is generic. The question is whether consumers understand “Booking.com” to mean the class of online hotel-reservation services, as they might understand another service such as Travelocity to be a “Booking.com” provider. The lower courts found that consumers did not use or understand the term that way, and the PTO did not challenge that factual determination before the Supreme Court.

The PTO’s reliance on Goodyear’s India Rubber Glove Manufacturing Co. v. Goodyear Rubber Co. was misplaced. Goodyear held that adding a generic corporate designation such as “Company” to a generic product name does not create a protectable mark because the added word conveys only that people have joined together to sell those goods. But “.com” differs in a material way: a particular domain name can be occupied by only one entity at a time, so consumers may associate a generic.com term with a specific website or its operator.

Goodyear is best understood as recognizing that a compound remains generic when its components, together, add no source-identifying meaning for consumers. It does not support an inflexible rule that ignores consumer understanding altogether. The Court therefore rejected both an automatic rule of genericness and any automatic rule that generic.com terms are nongeneric.

The PTO feared that registering “Booking.com” would allow its owner to control the generic word “booking” or to challenge competitors using similar terms and domain names. But that concern arises with descriptive marks generally, and trademark law addresses it through the likelihood-of-confusion requirement. A weak, descriptive mark receives a narrower scope of protection than a highly distinctive mark.

A competitor may also make classic fair use of a descriptive term when it uses the term fairly, in good faith, and other than as a mark to describe its own goods or services. Those limits mean that registration of “Booking.com” does not give Booking.com a monopoly over the word “booking.” Booking.com itself acknowledged that its mark would be weak and that competitors remain free to use “booking” descriptively.

The PTO also argued that generic-domain owners already receive valuable advantages from exclusive ownership of a memorable domain name, including search and direct-navigation benefits. The Court responded that such marketplace advantages do not make a term generic. Descriptive marks often are easy for consumers to find or remember, yet Congress permits their registration once they acquire distinctiveness.

Although unfair-competition law may sometimes prevent competitors from passing themselves off as Booking.com, federal registration supplies additional statutory benefits. Having concluded that Booking.com is not generic, the Court saw no basis to deny it the registration benefits Congress makes available to other qualifying marks.