Booking.com - is such a `generic' trade name protectable under the Lanham Act?

Autotrader.com logo

I've told my Business Torts students that autotrader.com is a protectable trade name.  The busy online platform does what its name describes - people buy and sell cars.  It is a term that describes what many do.  But it has been in business as a .com long enough that consumers recognize it as the name of a particular marketplace.  That is called acquiring "secondary meaning".  Argued on its first day of telephonic oral argument the Supreme Court may tell me that I'm wrong. - gwc
Booking.com - is such a `generic' trade name protectable under the Lanham Act?
by Jessica Litman  // Scotusblog May 5, 2020

The Supreme Court’s first telephonic oral argument raised the question whether a business can create a registrable trademark or service mark by combining an unprotectable generic term for the services it offers with the generic top-level domain name “.com.” Trademark law bars registration of generic terms, but it permits the registration of merely descriptive terms if they have acquired enough secondary meaning that the public understands them as trademarks rather than as terms that describe goods and services. The U.S. Patent and Trademark Office refused to register BOOKING.COM as a service mark for hotel reservation services. The U.S. Court of Appeals for the 4th Circuit held that the mark was entitled to registration, and the Supreme Court agreed to review that decision. The legal and policy issues raised by the case are straightforward, and both parties are represented by experienced lawyers, so the case presented a good vehicle for the first remote argument in this unusual May session. The court adopted a new, more formal procedure under which each justice, in order of seniority, could ask a single round of questions of each lawyer.

Erica Ross, representing the Patent and Trademark Office, argued first. Ross relied heavily on an 1888 Supreme Court decision, Goodyear’s India Rubber Glove v. Goodyear Rubber Co., which held that the combination  of a generic term with a corporate designation like “Company” did not create a protectable trademark. She emphasized that the principle that generic terms cannot be protected as trademarks is longstanding and fundamental. For that reason, courts have long held that evidence that seems to show that a generic term has acquired secondary meaning will not allow the term to be protected as a trademark. Further, she explained, because only one entity at a time can use any given internet domain name, it will be easy for a generic.com business to generate a survey that proves that a significant number of consumers associate any domain name with a specific business, even if the consumers are not familiar with that business. That would allow online businesses to monopolize generic terms even though they would not be able to do so for an equivalent brick and mortar business.

Attorney Lisa Blatt argued on behalf of Booking.com. Blatt insisted that when Congress passed the Lanham Act, the primary federal trademark law, it repudiated the 1888 Goodyear case, in favor of a rule that asks what consumers believe that a term signifies. The statute tells trademark examiners and the courts to determine whether a term is generic by examining the primary significance of that term to consumers. This test allows consumers to decide which terms merit trademark protection. Blatt insisted that the anticompetitive harms the government predicted would not materialize. Her client has no interest in suing a company that uses a similar domain name, she argued, because it would be unable to show a likelihood that consumers would be confused. A registered mark would give her client a weapon against counterfeiting, fraud and cyberpiracy.