U.S. Patent & Trademark Office v. Booking.com B. V.

591 U.S. 549, 140 S. Ct. 2298, 207 L. Ed. 2d 738
CourtSupreme Court of the United States
DecidedJune 30, 2020
Docket19-46
StatusPublished
Cited by62 cases

This text of 591 U.S. 549 (U.S. Patent & Trademark Office v. Booking.com B. V.) is published on Counsel Stack Legal Research, covering Supreme Court of the United States primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

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U.S. Patent & Trademark Office v. Booking.com B. V., 591 U.S. 549, 140 S. Ct. 2298, 207 L. Ed. 2d 738 (2020).

Opinions

Justice GINSBURG delivered the opinion of the Court.

*2301This case concerns eligibility for federal trademark registration. Respondent Booking.com, an enterprise that maintains a travel-reservation website by the same name, sought to register the mark "Booking.com." Concluding that "Booking.com" is a generic name for online hotel-reservation services, the U. S. Patent and Trademark Office (PTO) refused registration.

A generic name-the name of a class of products or services-is ineligible for federal trademark registration. The word "booking," the parties do not dispute, is generic for hotel-reservation services. "Booking.com" must also be generic, the PTO maintains, under an encompassing rule the PTO currently urges us to adopt: The combination of a generic word and ".com" is generic.

In accord with the first- and second-instance judgments in this case, we reject the PTO's sweeping rule. 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. Consumers, according to lower court determinations uncontested here by the PTO, do not perceive the term "Booking.com" to signify online hotel-reservation services as a class. In circumstances like those this case presents, a "generic.com" term is not generic and can be eligible for federal trademark registration.

*2302I

A

A trademark distinguishes one producer's goods or services from another's. Guarding a trademark against use by others, this Court has explained, "secure[s] to the owner of the mark the goodwill" of her business and "protect[s] the ability of consumers to distinguish among competing producers." Park 'N Fly, Inc. v. Dollar Park & Fly, Inc. , 469 U.S. 189, 105 S.Ct. 658, 83 L.Ed.2d 582, 198 (1985) ; see S. Rep. No. 1333, 79th Cong., 2d Sess., 3 (1946) (trademark statutes aim to "protect the public so it may be confident that, in purchasing a product bearing a particular trade-mark which it favorably knows, it will get the product which it asks for and wants to get"). Trademark protection has roots in common law and equity. Matal v. Tam , 582 U. S. ----, ----, 137 S.Ct. 1744, 1751, 198 L.Ed.2d 366 (2017). Today, the Lanham Act, enacted in 1946, provides federal statutory protection for trademarks. 60 Stat. 427, as amended, 15 U.S.C. § 1051 et seq. We have recognized that federal trademark protection, supplementing state law, "supports the free flow of commerce" and "foster[s] competition." Matal , 582 U. S., at ----, ---- - ----, 137 S.Ct., at 1751-1752, 1752-1753 (internal quotation marks omitted).

The Lanham Act not only arms trademark owners with federal claims for relief; importantly, it establishes a system of federal trademark registration. The owner of a mark on the principal register enjoys "valuable benefits," including a presumption that the mark is valid. Iancu v. Brunetti , 588 U. S. ----, ----, 139 S.Ct. 2294, 2297-2298, 204 L.Ed.2d 714 (2019) ; see §§ 1051, 1052. The supplemental register contains other product and service designations, some of which could one day gain eligibility for the principal register. See § 1091. The supplemental register accords more modest benefits; notably, a listing on that register announces one's use of the designation to others considering a similar mark. See 3 J. McCarthy, Trademarks and Unfair Competition § 19:37 (5th ed. 2019) (hereinafter McCarthy). Even without federal registration, a mark may be eligible for protection against infringement under both the Lanham Act and other sources of law. See Matal , 582 U. S., at ---- - ----, 137 S.Ct., at 1752-1753.

Prime among the conditions for registration, the mark must be one "by which the goods of the applicant may be distinguished from the goods of others." § 1052 ; see § 1091(a) (supplemental register contains "marks capable of distinguishing ... goods or services"). Distinctiveness is often expressed on an increasing scale: Word marks "may be (1) generic; (2) descriptive; (3) suggestive; (4) arbitrary; or (5) fanciful." Two Pesos, Inc. v. Taco Cabana, Inc. , 505 U.S. 763, 768, 112 S.Ct. 2753, 120 L.Ed.2d 615 (1992).

The more distinctive the mark, the more readily it qualifies for the principal register. The most distinctive marks-those that are " 'arbitrary' ('Camel' cigarettes), 'fanciful' ('Kodak' film), or 'suggestive' ('Tide' laundry detergent)"-may be placed on the principal register because they are "inherently distinctive." Wal-Mart Stores, Inc. v. Samara Brothers, Inc. , 529 U.S. 205, 210-211, 120 S.Ct. 1339, 146 L.Ed.2d 182 (2000). "Descriptive" terms, in contrast, are not eligible for the principal register based on their inherent qualities alone. E.g. , Park 'N Fly, Inc. v. Dollar Park & Fly, Inc. , 718 F.2d 327, 331 (CA9 1983) ("Park 'N Fly" airport parking is descriptive), rev'd on other grounds,

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591 U.S. 549, 140 S. Ct. 2298, 207 L. Ed. 2d 738, Counsel Stack Legal Research, https://law.counselstack.com/opinion/us-patent-trademark-office-v-bookingcom-b-v-scotus-2020.