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Trademarks: SCOTUS asked to decide if BOOKING.COM is not generic

News and Notes Focused on the 3 Public Faces of IP Law

  • Brand Image Protection - Trademark Law
  • Visual Image Protection - Copyright Law
  • Personal Image Protection - Right of Publicity Law

The Image Protection Law blog has been created in order to share stories and information on the legal aspects of: 1) the marketplace reputation of a company or product captured in its trademark, 2) published or publicly-displayed artwork, photography, and any created visual design, and 3) use of a person's photograph or likeness for product promotion or other commercial purposes.

The "IP3" share at least one thing in common: Image is everything. In these posts let's look at what that means in the realm of intellectual property in the news, but let's also be prepared to explore if there's something more beyond "everything." Don't forget, the intellectual in "intellectual property" doesn't mean smart or brainy, although by nature true creators often are. The word is used to refer to any creation, i.e., a "product of the mind." While this blog will be regularly updated, you are encouraged to share your thoughts on these posts.

The U.S. Patent and Trademark Office, known as the USPTO, filed a petition in July with the U.S. Supreme Court. The agency is asking the high court to review a decision of the U.S. Court of Appeals for the 4th Circuit. The appeals court held that while "booking" is a generic term and ".com" a generic domain designation, the combination of two generic terms into one domain name as BOOKING.COM makes the combined term nongeneric for trademark purposes.

BOOKING.COM is the online website that sells hotel reservations to the public.

Generic terms

The federal Lanham Act says that generic terms cannot be registered trademarks -- think "convenience store" or "gas station." A generic term cannot be a trademark because it is tells the what of a product or service; it does not tell the who, i.e., identify the source of a product or service.

Booking.com (the company) argues -- and the lower courts have agreed -- that BOOKING.COM (the domain name) is descriptive  and therefore potentially protectable, while the USPTO takes the position that it is generic and therefore not protectable in trademark.

Descriptive terms

A descriptive mark may be protected if the term describes something about the product such as its use, a trait, its purpose or other characteristics. It also must have secondary meaning, which the 4th Circuit described as having become "sufficiently distinctive to establish a mental association in the relevant public's minds between the proposed mark and the source of the product or service."

The only issue before the appeals court was whether the mark may be nongeneric, with the USPTO conceding that if so, the lower court's finding that it is descriptive and has secondary meaning "was warranted." Booking.com had submitted as evidence in the trial court a survey in which almost three-quarters of surveyed "consumers recognized BOOKING.COM as a brand rather than a generic service."

The 4th Circuit said that while "booking" could refer to making a reservation of any kind (not only hotels, but theater events, travel tickets and more) and ".com" to any domain, the mark must be analyzed as a whole in assessing genericness. The court said that combining two generic terms can create a nongeneric mark, disagreeing with the USPTO.

We will report back in this space when we learn whether the Supreme Court has agreed to hear this important case.

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