By: Robin Gentry

Lilenfeld PC

The Supreme Court has issued its opinion in a trademark case involving the mark “Booking.com.”  In that case, the Court refused to adopt a bright line test that any generic term when combined with “.com” is generic. Instead, the Court ruled that whether “any given ‘generic.com’ term is generic  . . . depends on whether consumers in fact perceive that term as the name of a class, or instead, as a term capable of distinguishing among members of the class.”

Both parties agreed that the term “booking” was generic for making travel reservations.  Booking.com argued that the combination of “booking” and “.com” was not generic, however, because consumers recognized the mark as descriptive for services involving booking hotel reservations.

The Trademark Office did not appeal the underlying decision regarding how consumers perceived “booking.com” but instead argued that the combination of a generic term with “.com” always produces a generic mark. The Trademark Office relied heavily on an 1888 decision that held that the combination of a generic term with a generic corporate designation, such as “Inc.” is always generic.

The Court rejected the Trademark Office’s argument.  In rendering its decision, the Court focused on the traditional test for determining whether a term is generic: whether the primary significance in the mind of consumers is a class of goods instead of a particular entity selling goods. Because the Trademark Office did not challenge the lower court’s findings regarding the primary meaning of the term, the Court affirmed the decision that Booking.com could be registered.

Both J. Breyer (in dissent) and J. Sotomayor (concurring) raised concerns regarding the use of survey evidence when litigating whether a trademark is generic or distinctive. Such survey evidence has traditionally been considered the “gold standard” but courts and litigants have relied less upon survey evidence in recent years. The further evolution of surveys in trademark cases, is something that should be carefully watched by both attorneys and those holding trademark portfolios.