In late June of this year the U.S. Supreme Court held that BOOKING.COM was protected as a trademark and should be granted registration in the Trademark Office. Until then trademarks consisting of a word like “booking” — generic in the field of travel-related services – combined with a highly descriptive (if not also generic) top level domain (TLD) like <.com>, were treated by the Trademark Office and the courts as generic and therefore unprotectable trademarks. Examples of such marks that were rejected for genericness included MATTRESS.COM and HOTELS.COM.
In the majority opinion, Justice Ginsburg noted the extensive evidence pointing to the public’s recognition of BOOKING.COM as a trademark, supported by survey results, and the fact that the term did not “behave” like a generic term. If it did, it would make perfect sense to say: “Travelocity is a Booking.com.” But it doesn’t, because BOOKING.COM does identify a single source, not a class of travel services available from many businesses. In his dissent, Justice Breyer remarked that, consistent with historical precedent, generic marks frequently start out as terms identifying a single source, but often that’s because that source enjoys a period of exclusivity, or it invests enough in the name to earn the public’s identification.
Trademark lawyers generally believe that the bar will be set relatively high for “generic-plus-TLD” marks to qualify for protection and registration. In other words, it will likely require a significant amount of advertising, clearly-established public recognition as a brand, and survey evidence backing it up, all of which will require a lot of time and expense.
What the Supreme Court did not answer is exactly how much protection is afforded by these “all but generic” trademarks. Even if BOOKING.COM is a valid trademark, how much exclusivity should that fence off? Safe “social distancing” for valid trademarks is not just meant to protect such marks from those of competitors; it’s also supposed to ensure that the public is not confused, and confidence in the marketplace is not undermined. If the buffer zone is narrow, as it should be, the courts may not enjoin the use of BOOKING.NET or MATTRESS.ORG. In that instance, the public, having been encouraged by law and relentless advertising to recognize the .COM version as a strong trademark, may still be confused into thinking that the .NET or .ORG versions are from the same source. But if the virtual generic trademarks are given broader rights, critical generic words would be removed from certain commercial uses, perhaps unnecessarily, thereby causing harm to free and fair competition in the marketplace.
We will be watching closely how this trademark drama plays out.
— Contributed by Larry Townsend