Supreme Court Promotes Weaponization of Generic Domain Names–USPTO v. Booking.com

The USPTO believed that “generic.com” domain names were almost always generic and therefore unregistrable. On that basis, it denied registration for Booking.com. The Supreme Court holds that generic.com domain names aren’t necessarily generic, which means they have the potential to become protectable trademarks and registrable.

Justice Ginsburg’s majority opinion holds: “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.” A footnote explains that consumer perceptions can be demonstrated by consumer surveys, dictionaries, usage by consumers/competitors, and other sources.

The majority explains why domain names aren’t always generic:

• Consumers wouldn’t describe Travelocity as a “booking.com provider,” so the phrase doesn’t describe the class of goods/services.
• Stated another way, there is only one entity at Booking.com due to the technical nature of domain names. For this reason, the majority distinguishes generic.com from Generic Corp. or Generic Inc., which cannot become protectable due to the “Corp.” or “Inc.” The majority says that there can be many Wine Corp. entities, but only one Wine.com domain name registrant. As Justice Breyer argues in dissent, this argument could cut the other way; it might be appropriate to deny trademark protection because the registrant already benefits from the exclusivity of a domain name.

Implications

What’s the Scope of Booking.com’s Trademark? Booking.com made numerous concessions about the limits of any trademark rights. It acknowledged that the term “booking” is generic;  its trademark rights are “weak”; “close variations are unlikely to infringe”; and other registrants can include “booking” in their trademarks. The majority opinion also notes that the likelihood of confusion and descriptive fair use doctrines further limit any trademark rights in generic.com trademarks.

So when exactly can Booking.com enforce any trademark rights? Surely it can preclude a competitor from marketing itself as “Booking.com,” but no competitor would do that because such marketing would benefit the domain name owner. Thus, as Justice Breyer notes in dissent, it’s pointless to register the Booking.com trademark unless it protects something more than the domain name. So what else is covered? For example, what about other Booking.TLD domain names? Do any of them infringe booking.com? The court doesn’t answer this question, even though it has substantial import for the domain community. If Booking.biz or Booking.cm infringes Booking.com, then Booking.com gets control over a potentially sizable portion of the domain namespace. If not, then what exactly does the trademark confer on Booking.com?

A Narrowing of Genericism?  The majority opinion says “A term styled ‘generic.com’ is a generic name for a class of goods or services only if the term has that meaning to consumers.” This seems to suggest that terms can be generic only when it precisely matches the dictionary term; slight variations may have a different meaning to consumers. Thus, this ruling potentially circumscribes the scope of generic terms, pushing everything else into the descriptive category (where it can be turned into a trademark and weaponized). This is not a good ruling for trademark’s “public domain.”

What Effect for the Secondary Registry? If this ruling means that generic.com domain names are now capable of registration, does this create an easier or guaranteed path for such domain names to get onto the secondary registry? Secondary registrations don’t have full benefits of trademark protection, but many people in the field don’t know the difference between the registries and that makes secondary registrations weaponizable.

The Inevitable Weaponization of Generic.com Domain Names. The majority accepted Booking.com’s concessions that it cannot overclaim its trademark; but other generic.com registrants will not feel similarly constrained. Everyone familiar with the trademark system knows how this story will turn out and why this is a pernicious ruling. Other owners of generic.com will claim their domain names are entitled to trademark protection and use that uncertainty to bully targets off of legitimate uses. If they actually obtain trademark registration, they will claim substantial similarity and bully registrants of other domain names containing the generic term. The legal uncertainty is exactly what empowers the bullying threats. Most recipients of trademark legal threats don’t know the nuances of trademark law and certainly aren’t willing to pay to find out.

More generally, by converting the generic.com question from a per se rule to a multi-consideration legal standard, the majority favored well-funded players. In particular, the majority treats the generic classification as always susceptible to factual rebutting, including through consumer surveys. Litigious owners of generic.com domain names will force defendants to acquiesce rather than incur costly surveys or hire costly rebuttal experts to counteract a generic.com trademark enforcement. The desire to avoid those costs, especially among targets without financial means, will facilitate bullying and circumscribe behavior that’s lawful under trademark law.

Case citation: U.S. Patent & Trademark Office v. Booking.com BV, No. 19-46 (SCOTUS June 30, 2020)