The USPTO believed that the generic.com domain names were almost always generic and therefore not registrable. Based on this, registration for Booking.com was refused. The Supreme Court ruled that generic.com domain names are not necessarily generic, which means they have the potential to become trademarks that can be protected and become registrable.
The majority opinion of Justice Ginsburg states: "Whether a certain" generic.com " Term is generic …depends on whether consumers actually perceive this term as the name of a class or instead as a term that is able to distinguish between members of the class. “A footnote explains that consumer perception can be demonstrated through consumer surveys, dictionaries, consumer / competitor use, and other sources.
The majority explain why domain names are not always generic:
- Consumers would not call Travelocity a "booking.com provider", so the term does not describe the class of goods / services.
- In other words, due to the technical nature of domain names, there is only one entity on Booking.com. For this reason, the majority distinguishes generic.com from Generic Corp. or Generic Inc., which cannot be protected due to the "Corp.". or "Inc." The majority indicate that there can be many Wine Corp. companies, but only one Wine.com domain name registrant. As Richter Breyer argues differently, this argument could go in the other direction; It may be appropriate to refuse trademark protection because the registrant already benefits from the exclusivity of a domain name.
What is the scope of the Booking.com brand? Booking.com has made numerous concessions on the limits of trademark rights. It has been recognized that the term "booking" is general. his trademark rights are "weak"; "Close deviations are unlikely to be violated"; and other registrants can include "booking" in their brands. The majority opinion also points out that the risk of confusion and the descriptive fair-use doctrines further restrict the trademark rights to generic.com trademarks.
When exactly can Booking.com enforce trademark rights? Certainly, it may prevent a competitor from marketing itself as "Booking.com", but no competitor would do so because such marketing would benefit the domain name owner. As Justice Breyer points out, it is therefore pointless to register the Booking.com brand unless it protects more than the domain name. So what's still covered? What about other Booking.TLD domain names, for example? Does any of them violate booking.com? The court does not answer this question, although it is of considerable importance for the domain community. If Booking.biz or Booking.cm violates Booking.com, Booking.com gains control over a potentially substantial part of the domain namespace. If not, what exactly does the brand give Booking.com?
A narrowing of genericism? The majority opinion says: "A term called" generic.com "is only a generic name for a class of goods or services if the term has this meaning for consumers." This seems to indicate that terms can only be generic if they exactly match the dictionary term. minor deviations can have a different meaning for consumers. Thus, this judgment may circumscribe the scope of general terms and push everything else into the descriptive category (where it can be converted to a brand and armed). This is not a good decision for the "public domain" of the brand.
What is the effect of the secondary register? If this decision means that generic.com domain names can now be registered, does this create an easier or guaranteed path for such domain names to get into secondary registration? Secondary registrations do not offer all the advantages of trademark protection, but many experts do not know the difference between registrations and this makes secondary registrations weapon-capable.
The inevitable weapon of Generic.com domain names. The majority accepted Booking.com's concessions that it couldn't overwhelm its brand. However, other generic.com registrants will not feel similarly restricted. Anyone familiar with the branding system knows how this story will develop and why this is a harmful decision. Other generic.com owners claim that their domain names are entitled to trademark protection and use this uncertainty to harass targets for legitimate uses. When they actually get a trademark registration, they claim considerable similarity and harass registrants of other domain names that contain the generic term. Legal uncertainty is exactly what empowers the bullying threats. Most recipients of trademark threats are unaware of the nuances of trademark law and are certainly not willing to pay to find out.
In general, the majority preferred well-funded players by converting the generic.com question from a per se rule to a multi-consideration legal standard. In particular, the majority treat the generic classification as always susceptible to factual refutation, including through consumer surveys. Litigation owners of generic.com domain names force the accused to submit, rather than conduct costly surveys, or hire expensive refutation experts to counter enforcement of the generic.com brand. The desire to avoid these costs, especially for goals without financial resources, will facilitate bullying and describe the behavior permitted by trademark law.
Case quote: U.S. Patent and Trademark Office v Booking.com BV, No. 19-46 (SCOTUS June 30, 2020)