After a week of landmark decisions from the Supreme court on issues ranging from religious education to LGBTQ+ rights, the high court issued another significant ruling, this time promoting trademark protection for trademarks with generic terms. By way of background, generic names can’t merit trademark protection. The USPTO refused to register Respondent Booking.com’s website of the same name since “Booking” is a generic term and. established that adding suffixes to generic names yields a generic combination. The District Court rejected this, holding “Booking.com” is not generic when the “.com” suffix is added to a generic name in a decision affirmed by the Court of Appeals. In an 8-1 decision (Justice Breyer dissenting). The Supreme Court affirmed the lower courts’ rulings holding the name “Booking.com” is not generic, meriting respondent’s trademark protection since the PTO’s proposed rule from Goodyear’s India Rubber Glove mfg. Co. vs Goodyear Rubber Co disagrees with its own practices and, rather, per the Lanaham Act, a trademark’s generic-ness lies in its understanding by consumers who do understand “Booking.com” as a separate entity.
In her court Opinion, Justice Ginsberg, dismissed the USPTO’s contention that “the combination of a generic word and ‘.com’ is generic” because consumers understand that “Booking.com” does not refer to the whole class of online hotel-reservation services. If this were true, Ginsberg argues, “consumers would understand “Travelocity- another such service- to be a “booking.com. [The Court] might similarly expect that a consumer, searching for a trusted source of online hotel searching for a trusted source of online hotel-reservation services, could ask a frequent traveler to name her favorite “booking.com. Consumers do not in fact perceive the term this way”
Ginsberg also dismissed the PTO’s sweeping rule resulting from Goodyear’s India Rubber Glove mfg. Co. vs Goodyear Rubber Co. In that case., the court held that adding the word ‘company supplied no protectable meaning”. However, The Goodyear’s India Rubber Glove mfg. Co. vs Goodyear Rubber Co decision occurred before the Lanham act with its focus on consumer perceptions as such it is incompatible with the spirit of that law. Also, the “company”, dealt with in that case denotes any group that forms to deal in such goods. Here, the name to the right of a .com suffix denotes one unique domain name. Hypothetically can be any number of “Booking companies” but there can only ever be one “Booking.com”. Finally, the USTPTO own past practices break the Goodyear’s India Rubber Glove mfg. Co. vs Goodyear Rubber rule, as registration of such domain names “Art.com” and “Dating.com” attest.