09 May, 2019

It's all the Same - US Court of Appeals Considers When a Trademark is Generic

Having a well-known brand along with an innovative product can be a cruel mistress to many companies. As your product becomes the market leader, and your brand 'the brand' within that category, there is a risk that your trademark can come under threat of becoming generic. This writer for one has caught himself many times asking someone to "Google" something (found to not be a generic term) or referring to sticky bandages as "Band-Aids" - both of which are examples of misusing a trademark and illustrate the perils of becoming 'the brand'. This issue is rarely litigated extensively in the courts, but a recent case in the US Court of Appeals took it on again and giving us yet more insight into how the courts determine if a trademark is generic or not.

The case of Booking.com BV v USPTO concerned applications by Booking.com to register the name "BOOKING.COM" in a few variations. The marks were initially rejected by both the USPTO and the Trademark Trial and Appeal Board, which considered that the mark was generic as applied to the relevant services, finally succeeding with the District Court. The matter was ultimately appealed to the Court of Appeals, who was tasked with determining whether the mark is generic or not.

In terms of provenance of whether a mark is generic or not, according to the Court, the onus lies on the USPTO to prove this is indeed the case.

The Court then moved onto setting out the test to determine whether a mark is generic or not. The test consists of three factors: (i) identify the class of product or service to which use of the mark is relevant; (ii) identify the relevant consuming public; and (iii) determine whether the primary significance of the mark to the relevant public is as an indication of the nature of the class of the product or services to which the mark relates, which suggests that it is generic, or an indication of the source or brand, which suggests that it is not generic. Once a mark has been deemed to be generic, it cannot become distinctive.

To book or not to book - that is the question
Both parties agreed that, in relation to the first and second steps, the mark is used to identify the class or product to which it belongs (i.e. making hotel reservations for others) and the relevant purchasing public consists of consumers who use hotel reservation services offered via the internet or in person. What remains at issue is the third step, i.e. "…the public's understanding of what the term BOOKING.COM primarily refers to".

In considering the public's understanding of a term the courts may look at "…purchaser testimony, consumer surveys, listings and dictionaries, trade journals, newspapers, and other publications". To ascertain whether the same term is understood to primarily refer to the service or the source the Courts consider the proposed mark as a whole.

The Court subsequently had to consider whether the USPTO's evidence that the public use "booking.com" generically, and whether the inclusion of a top-level domain to a generic second-level domain 'booking' means the mark is necessarily generic.

The USPTO failed to show in their evidence that the mark had become generic. Even though other domain names featured the term 'booking', these alone didn't make the mark generic since the term 'booking' is used to book a multitude of things, not just hotels. Consumers, therefore, wouldn't necessarily understand the mark to automatically mean the provision of hotel booking services. Booking.com's consumer survey also indicated that over 70% of consumers identified the mark as meaning the company, and not just any booking service for hotels. The mark was descriptive, and not generic. The Court of Appeals, therefore, rejected the USPTO's first argument.

The USPTO then argued that the addition of the second-level domain ".com" meant that the mark was necessarily generic.

The Court followed by expanding on its considerations of compound marks, like Booking.com. This focusses on how the public perceives the mark as a whole, not simply as a collation of separate constituent parts. Leading from this the Court noted that the addition of ".com" doesn't in itself make a mark generic, as the public's perception would have to be considered in the light of the whole mark. Additionally, even though the mark describes the activity within the website "...it does not necessarily follow that the public commonly understands the mark to refer to the service broadly speaking". The Court, therefore, rejected the argument on the addition of ".com" making a mark generic.

The Court finally noted that, even though the mark does describe the activity of booking something via a website (specifically hotels), it doesn't prevent others from using the mark in a different context, e.g. booking a car rental or travel tickets.

The case does provide further discussion of an important facet of trademark law in the US, which isn't often touched upon by the courts. While the subject matter is somewhat established, it sets out in more detail the world of trademarks in an online environment, which is growing in importance as we become more and more entwined in an online marketplace.