Judges: Ruth Bader Ginsburg
Filed: Jun. 30, 2020
Latest Update: Jun. 30, 2020
Summary: (Slip Opinion) OCTOBER TERM, 2019 1 Syllabus NOTE: Where it is feasible, a syllabus (headnote) will be released, as is being done in connection with this case, at the time the opinion is issued. The syllabus constitutes no part of the opinion of the Court but has been prepared by the Reporter of Decisions for the convenience of the reader. See United States v. Detroit Timber & Lumber Co., 200 U.S. 321 , 337. SUPREME COURT OF THE UNITED STATES Syllabus UNITED STATES PATENT AND TRADEMARK OFFICE ET
Summary: (Slip Opinion) OCTOBER TERM, 2019 1 Syllabus NOTE: Where it is feasible, a syllabus (headnote) will be released, as is being done in connection with this case, at the time the opinion is issued. The syllabus constitutes no part of the opinion of the Court but has been prepared by the Reporter of Decisions for the convenience of the reader. See United States v. Detroit Timber & Lumber Co., 200 U.S. 321 , 337. SUPREME COURT OF THE UNITED STATES Syllabus UNITED STATES PATENT AND TRADEMARK OFFICE ET ..
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(Slip Opinion) OCTOBER TERM, 2019 1
Syllabus
NOTE: Where it is feasible, a syllabus (headnote) will be released, as is
being done in connection with this case, at the time the opinion is issued.
The syllabus constitutes no part of the opinion of the Court but has been
prepared by the Reporter of Decisions for the convenience of the reader.
See United States v. Detroit Timber & Lumber Co., 200 U.S. 321, 337.
SUPREME COURT OF THE UNITED STATES
Syllabus
UNITED STATES PATENT AND TRADEMARK OFFICE
ET AL. v. BOOKING.COM B. V.
CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR
THE FOURTH CIRCUIT
No. 19–46. Argued May 4, 2020—Decided June 30, 2020
A generic name—the name of a class of products or services—is ineligible
for federal trademark registration. Respondent Booking.com, an en-
terprise that maintains a travel-reservation website by the same
name, sought federal registration of marks including the term “Book-
ing.com.” Concluding that “Booking.com” is a generic name for online
hotel-reservation services, the U. S. Patent and Trademark Office
(PTO) refused registration. Booking.com sought judicial review, and
the District Court determined that “Booking.com”—unlike the term
“booking” standing alone—is not generic. The Court of Appeals af-
firmed, finding no error in the District Court’s assessment of how con-
sumers perceive the term “Booking.com.” The appellate court also re-
jected the PTO’s contention that, as a rule, combining a generic term
like “booking” with “.com” yields a generic composite.
Held: 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. Pp. 6–14.
(a) Whether a compound term is generic turns on whether that term,
taken as a whole, signifies to consumers a class of goods or services.
The courts below determined, and the PTO no longer disputes, that
consumers do not in fact perceive the term “Booking.com” that way.
Because “Booking.com” is not a generic name to consumers, it is not
generic. Pp. 6–7.
(b) Opposing that determination, the PTO urges a nearly per se rule:
When a generic term is combined with a generic Internet-domain-
name suffix like “.com,” the resulting combination is generic. The rule
the PTO proffers is not borne out by the PTO’s own past practice and
lacks support in trademark law or policy. Pp. 7–14.
(1) The PTO’s proposed rule does not follow from Goodyear’s India
2 PATENT AND TRADEMARK OFFICE v. BOOKING.COM B. V.
Syllabus
Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U.S. 598. Good-
year, the PTO maintains, established that adding a generic corporate
designation like “Company” to a generic term does not confer trade-
mark eligibility. According to the PTO, adding “.com” to a generic
term—like adding “Company”—can convey no source-identifying
meaning. That premise is faulty, for only one entity can occupy a par-
ticular Internet domain name at a time, so a “generic.com” term could
convey to consumers an association with a particular website. More-
over, an unyielding legal rule that entirely disregards consumer per-
ception is incompatible with a bedrock principle of the Lanham Act:
The generic (or nongeneric) character of a particular term depends on
its meaning to consumers, i.e., do consumers in fact perceive the term
as the name of a class or, instead, as a term capable of distinguishing
among members of the class. Pp. 8–11.
(2) The PTO’s policy concerns do not support a categorical rule
against registration of “generic.com” terms. The PTO asserts that
trademark protection for “Booking.com” would give the mark owner
undue control over similar language that others should remain free to
use. That concern attends any descriptive mark. Guarding against
the anticompetitive effects the PTO identifies, several doctrines ensure
that registration of “Booking.com” would not yield its holder a monop-
oly on the term “booking.” The PTO also doubts that owners of “ge-
neric.com” brands need trademark protection in addition to existing
competitive advantages. Such advantages, however, do not inevitably
disqualify a mark from federal registration. Finally, the PTO urges
that Booking.com could seek remedies outside trademark law, but
there is no basis to deny Booking.com the same benefits Congress ac-
corded other marks qualifying as nongeneric. Pp. 11–14.
915 F.3d 171, affirmed.
GINSBURG, J., delivered the opinion of the Court, in which
ROBERTS, C. J., and THOMAS, ALITO, SOTOMAYOR, KAGAN, GORSUCH, and
KAVANAUGH, JJ., joined. SOTOMAYOR, J., filed a concurring opinion.
BREYER, J., filed a dissenting opinion.
Cite as: 591 U. S. ____ (2020) 1
Opinion of the Court
NOTICE: This opinion is subject to formal revision before publication in the
preliminary print of the United States Reports. Readers are requested to
notify the Reporter of Decisions, Supreme Court of the United States, Wash-
ington, D. C. 20543, of any typographical or other formal errors, in order that
corrections may be made before the preliminary print goes to press.
SUPREME COURT OF THE UNITED STATES
_________________
No. 19–46
_________________
UNITED STATES PATENT AND TRADEMARK OFFICE,
ET AL., PETITIONERS v. BOOKING.COM B. V.
ON WRIT OF CERTIORARI TO THE UNITED STATES COURT OF
APPEALS FOR THE FOURTH CIRCUIT
[June 30, 2020]
JUSTICE GINSBURG delivered the opinion of the Court.
This case concerns eligibility for federal trademark regis-
tration. Respondent Booking.com, an enterprise that main-
tains 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) re-
fused registration.
A generic name—the name of a class of products or ser-
vices—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 ge-
neric, the PTO maintains, under an encompassing rule the
PTO currently urges us to adopt: The combination of a ge-
neric 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 un-
contested here by the PTO, do not perceive the term
2 PATENT AND TRADEMARK OFFICE v. BOOKING.COM B. V.
Opinion of the Court
“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 fed-
eral trademark registration.
I
A
A trademark distinguishes one producer’s goods or ser-
vices 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 pro-
ducers.” Park ’N Fly, Inc. v. Dollar Park & Fly, Inc., 469
U.S. 189, 198 (1985); see S. Rep. No. 1333, 79th Cong., 2d
Sess., 3 (1946) (trademark statutes aim to “protect the pub-
lic so it may be confident that, in purchasing a product bear-
ing 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. ___, ___ (2017) (slip op., at 2). To-
day, 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] compe-
tition.” Matal, 582 U. S., at ___, ___–___ (slip op., at 3, 4–5)
(internal quotation marks omitted).
The Lanham Act not only arms trademark owners with
federal claims for relief; importantly, it establishes a sys-
tem of federal trademark registration. The owner of a mark
on the principal register enjoys “valuable benefits,” includ-
ing a presumption that the mark is valid. Iancu v. Brunetti,
588 U. S. ___, ___ (2019) (slip op., at 2); see §§1051, 1052.
The supplemental register contains other product and ser-
vice designations, some of which could one day gain eligibil-
ity for the principal register. See §1091. The supplemental
Cite as: 591 U. S. ____ (2020) 3
Opinion of the Court
register accords more modest benefits; notably, a listing on
that register announces one’s use of the designation to oth-
ers considering a similar mark. See 3 J. McCarthy, Trade-
marks and Unfair Competition §19:37 (5th ed. 2019) (here-
inafter 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 ___–___ (slip op., at 4–5).
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 distin-
guishing . . . goods or services”). Distinctiveness is often ex-
pressed on an increasing scale: Word marks “may be (1) ge-
neric; (2) descriptive; (3) suggestive; (4) arbitrary; or (5)
fanciful.” Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S.
763, 768 (1992).
The more distinctive the mark, the more readily it quali-
fies 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 (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,
469 U.S. 189 (1985). The Lanham Act, “lib-
eraliz[ing] the common law,” “extended protection to de-
scriptive marks.” Qualitex Co. v. Jacobson Products Co.,
514 U.S. 159, 171 (1995). But to be placed on the principal
register, descriptive terms must achieve significance “in the
minds of the public” as identifying the applicant’s goods or
services—a quality called “acquired distinctiveness” or “sec-
ondary meaning.” Wal-Mart
Stores, 529 U.S., at 211
4 PATENT AND TRADEMARK OFFICE v. BOOKING.COM B. V.
Opinion of the Court
(internal quotation marks omitted); see §1052(e), (f ).
Without secondary meaning, descriptive terms may be
eligible only for the supplemental register. §1091(a).
At the lowest end of the distinctiveness scale is “the
generic name for the goods or services.” §§1127, 1064(3),
1065(4). The name of the good itself (e.g., “wine”) is
incapable of “distinguish[ing] [one producer’s goods] from
the goods of others” and is therefore ineligible for registra-
tion. §1052; see §1091(a). Indeed, generic terms are ordi-
narily ineligible for protection as trademarks at all. See
Restatement (Third) of Unfair Competition §15, p. 142
(1993); Otokoyama Co. v. Wine of Japan Import, Inc., 175
F.3d 266, 270 (CA2 1999) (“[E]veryone may use [generic
terms] to refer to the goods they designate.”).
B
Booking.com is a digital travel company that provides
hotel reservations and other services under the brand
“Booking.com,” which is also the domain name of its web-
site.1 Booking.com filed applications to register four marks
in connection with travel-related services, each with different
visual features but all containing the term “Booking.com.”2
Both a PTO examining attorney and the PTO’s Trade-
mark Trial and Appeal Board concluded that the term
“Booking.com” is generic for the services at issue and is
therefore unregistrable. “Booking,” the Board observed,
means making travel reservations, and “.com” signifies a
——————
1 A domain name identifies an address on the Internet. The rightmost
component of a domain name—“.com” in “Booking.com”—is known as the
top-level domain. Domain names are unique; that is, a given domain
name is assigned to only one entity at a time.
2 For simplicity, this opinion uses the term “trademark” to encompass
the marks whose registration Booking.com seeks. Although Book-
ing.com uses the marks in connection with services, not goods, rendering
the marks “service marks” rather than “trademarks” under 15 U.S. C.
§1127, that distinction is immaterial to the issue before us.
Cite as: 591 U. S. ____ (2020) 5
Opinion of the Court
commercial website. The Board then ruled that “customers
would understand the term BOOKING.COM primarily to
refer to an online reservation service for travel, tours, and
lodgings.” App. to Pet. for Cert. 164a, 176a. Alternatively,
the Board held that even if “Booking.com” is descriptive, not
generic, it is unregistrable because it lacks secondary
meaning.
Booking.com sought review in the U. S. District Court for
the Eastern District of Virginia, invoking a mode of review
that allows Booking.com to introduce evidence not pre-
sented to the agency. See §1071(b). Relying in significant
part on Booking.com’s new evidence of consumer percep-
tion, the District Court concluded that “Booking.com”—un-
like “booking”—is not generic. The “consuming public,” the
court found, “primarily understands that BOOKING.COM
does not refer to a genus, rather it is descriptive of services
involving ‘booking’ available at that domain name.” Book-
ing.com B.V. v. Matal, 278 F. Supp. 3d 891, 918 (2017).
Having determined that “Booking.com” is descriptive, the
District Court additionally found that the term has ac-
quired secondary meaning as to hotel-reservation services.
For those services, the District Court therefore concluded,
Booking.com’s marks meet the distinctiveness requirement
for registration.
The PTO appealed only the District Court’s determina-
tion that “Booking.com” is not generic. Finding no error in
the District Court’s assessment of how consumers perceive
the term “Booking.com,” the Court of Appeals for the
Fourth Circuit affirmed the court of first instance’s judg-
ment. In so ruling, the appeals court rejected the PTO’s
contention that the combination of “.com” with a generic
term like “booking” “is necessarily generic.”
915 F.3d 171,
184 (2019). Dissenting in relevant part, Judge Wynn con-
cluded that the District Court mistakenly presumed that
“generic.com” terms are usually descriptive, not generic.
6 PATENT AND TRADEMARK OFFICE v. BOOKING.COM B. V.
Opinion of the Court
We granted certiorari, 589 U. S. ___ (2019), and now af-
firm the Fourth Circuit’s decision.
II
Although the parties here disagree about the circum-
stances in which terms like “Booking.com” rank as generic,
several guiding principles are common ground. First, a “ge-
neric” term names a “class” of goods or services, rather than
any particular feature or exemplification of the class. Brief
for Petitioners 4; Brief for Respondent 6; see §§1127,
1064(3), 1065(4) (referring to “the generic name for the
goods or services”); Park ’N Fly, 469 U.S., at 194 (“A generic
term is one that refers to the genus of which the particular
product is a species.”). Second, for a compound term, the
distinctiveness inquiry trains on the term’s meaning as a
whole, not its parts in isolation. Reply Brief 9; Brief for
Respondent 2; see Estate of P. D. Beckwith, Inc. v.
Commissioner of Patents,
252 U.S. 538, 545–546 (1920).
Third, the relevant meaning of a term is its meaning to
consumers. Brief for Petitioners 43–44; Brief for
Respondent 2; see Bayer Co. v. United Drug Co.,
272 F. 505,
509 (SDNY 1921) (Hand, J.) (“What do the buyers
understand by the word for whose use the parties are
contending?”). Eligibility for registration, all agree, turns
on the mark’s capacity to “distinguis[h]” goods “in
commerce.” §1052. Evidencing the Lanham Act’s focus on
consumer perception, the section governing cancellation of
registration provides that “[t]he primary significance of the
registered mark to the relevant public . . . shall be the test
for determining whether the registered mark has become
the generic name of goods or services.” §1064(3).3
——————
3 The U. S. Patent and Trademark Office (PTO) suggests that the
primary-significance test might not govern outside the context of
§1064(3), which subjects to cancellation marks previously registered
that have “become” generic. See Reply Brief 11; Tr. of Oral Arg. 19. To
Cite as: 591 U. S. ____ (2020) 7
Opinion of the Court
Under these principles, whether “Booking.com” is generic
turns on whether that term, taken as a whole, signifies to
consumers the class of online hotel-reservation services.
Thus, if “Booking.com” were generic, we might expect
consumers to understand Travelocity—another such
service—to be a “Booking.com.” We might similarly expect
that a consumer, searching for a trusted source of online
hotel-reservation services, could ask a frequent traveler to
name her favorite “Booking.com” provider.
Consumers do not in fact perceive the term
“Booking.com” that way, the courts below determined. The
PTO no longer disputes that determination. See Pet. for
Cert. I; Brief for Petitioners 17–18 (contending only that a
consumer-perception inquiry was unnecessary, not that the
lower courts’ consumer-perception determination was
wrong). That should resolve this case: Because
“Booking.com” is not a generic name to consumers, it is not
generic.
III
Opposing that conclusion, the PTO urges a nearly per se
rule that would render “Booking.com” ineligible for regis-
tration regardless of specific evidence of consumer percep-
tion. In the PTO’s view, which the dissent embraces, when
a generic term is combined with a generic top-level domain
——————
so confine the primary-significance test, however, would upset the un-
derstanding, shared by Courts of Appeals and the PTO’s own manual for
trademark examiners, that the same test governs whether a mark is reg-
istrable in the first place. See, e.g., In re Cordua Restaurants, Inc., 823
F.3d 594, 599 (CA Fed. 2016); Nartron Corp. v. STMicroelectronics, Inc.,
305 F.3d 397, 404 (CA6 2002); Genesee Brewing Co. v. Stroh Brewing
Co.,
124 F.3d 137, 144 (CA2 1997); Trademark Manual of Examining
Procedure §1209.01(c)(i), p. 1200–267 (Oct. 2018), http://tmep.uspto.gov.
We need not address today the scope of the primary-significance test’s
application, for our analysis does not depend on whether one meaning
among several is “primary.” Sufficient to resolve this case is the undis-
puted principle that consumer perception demarcates a term’s meaning.
8 PATENT AND TRADEMARK OFFICE v. BOOKING.COM B. V.
Opinion of the Court
like “.com,” the resulting combination is generic. In other
words, every “generic.com” term is generic according to the
PTO, absent exceptional circumstances.4
The PTO’s own past practice appears to reflect no such
comprehensive rule. See, e.g., Trademark Registration No.
3,601,346 (“ART.COM” on principal register for, inter alia,
“[o]nline retail store services” offering “art prints, original
art, [and] art reproductions”); Trademark Registration No.
2,580,467 (“DATING.COM” on supplemental register for
“dating services”). Existing registrations inconsistent with
the rule the PTO now advances would be at risk of cancel-
lation if the PTO’s current view were to prevail. See
§1064(3). We decline to adopt a rule essentially excluding
registration of “generic.com” marks. As explained below,
we discern no support for the PTO’s current view in trade-
mark law or policy.
A
The PTO urges that the exclusionary rule it advocates
follows from a common-law principle, applied in Goodyear’s
India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128
U.S. 598 (1888), that a generic corporate designation added
to a generic term does not confer trademark eligibility. In
Goodyear, a decision predating the Lanham Act, this Court
held that “Goodyear Rubber Company” was not “capable of
exclusive appropriation.”
Id., at 602. Standing alone, the
term “Goodyear Rubber” could not serve as a trademark
because it referred, in those days, to “well-known classes of
goods produced by the process known as Goodyear’s
invention.”
Ibid. “[A]ddition of the word ‘Company’ ”
supplied no protectable meaning, the Court concluded,
——————
4 The PTO notes only one possible exception: Sometimes adding a ge-
neric term to a generic top-level domain results in wordplay (for example,
“tennis.net”). That special case, the PTO acknowledges, is not presented
here and does not affect our analysis. See Brief for Petitioners 25, n. 6;
Tr. of Oral Arg. 25–26.
Cite as: 591 U. S. ____ (2020) 9
Opinion of the Court
because adding “Company” “only indicates that parties
have formed an association or partnership to deal in such
goods.” Ibid. Permitting exclusive rights in “Goodyear
Rubber Company” (or “Wine Company, Cotton Company, or
Grain Company”), the Court explained, would tread on the
right of all persons “to deal in such articles, and to publish
the fact to the world.”
Id., at 602–
603.
“Generic.com,” the PTO maintains, is like “Generic Com-
pany” and is therefore ineligible for trademark protection,
let alone federal registration. According to the PTO, adding
“.com” to a generic term—like adding “Company”—“conveys
no additional meaning that would distinguish [one pro-
vider’s] services from those of other providers.” Brief for
Petitioners 44. The dissent endorses that proposition: “Ge-
neric.com” conveys that the generic good or service is of-
fered online “and nothing more.” Post, at 1.
That premise is faulty. A “generic.com” term might also
convey to consumers a source-identifying characteristic: an
association with a particular website. As the PTO and the
dissent elsewhere acknowledge, only one entity can occupy
a particular Internet domain name at a time, so “[a] con-
sumer who is familiar with that aspect of the domain-name
system can infer that BOOKING.COM refers to some spe-
cific entity.” Brief for Petitioners 40. See also Tr. of Oral
Arg. 5 (“Because domain names are one of a kind, a signifi-
cant portion of the public will always understand a generic
‘.com’ term to refer to a specific business . . . .”); post, at 7
(the “exclusivity” of “generic.com” terms sets them apart
from terms like “Wine, Inc.” and “The Wine Company”).
Thus, consumers could understand a given “generic.com”
term to describe the corresponding website or to identify
the website’s proprietor. We therefore resist the PTO’s
position that “generic.com” terms are capable of signifying
only an entire class of online goods or services and, hence,
10 PATENT AND TRADEMARK OFFICE v. BOOKING.COM B. V.
Opinion of the Court
are categorically incapable of identifying a source.5
The PTO’s reliance on Goodyear is flawed in another re-
spect. The PTO understands Goodyear to hold that “Ge-
neric Company” terms “are ineligible for trademark protec-
tion as a matter of law”—regardless of how “consumers
would understand” the term. Brief for Petitioners 38. But,
as noted, whether a term is generic depends on its meaning
to consumers. Supra, at 6. That bedrock principle of the
Lanham Act is incompatible with an unyielding legal rule
that entirely disregards consumer perception. Instead,
Goodyear reflects a more modest principle harmonious with
Congress’ subsequent enactment: A compound of generic el-
ements is generic if the combination yields no additional
meaning to consumers capable of distinguishing the goods
or services.
The PTO also invokes the oft-repeated principle that “no
matter how much money and effort the user of a generic
term has poured into promoting the sale of its merchandise
——————
5 In passing, the PTO urges us to disregard that a domain name is as-
signed to only one entity at a time. That fact, the PTO suggests, stems
from “a functional characteristic of the Internet and the domain-name
system,” and functional features cannot receive trademark protection.
Brief for Petitioners 32. “[A] product feature is functional, and cannot
serve as a trademark,” we have held, “if it is essential to the use or pur-
pose of the article or if it affects the cost or quality of the article.” TrafFix
Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 32 (2001) (internal
quotation marks omitted); see §1052(e) (barring from the principal reg-
istrar “any matter that, as a whole, is functional”). This case, however,
does not concern trademark protection for a feature of the Internet or the
domain-name system; Booking.com lays no claim to the use of unique
domain names generally. Nor does the PTO contend that the particular
domain name “Booking.com” is essential to the use or purpose of online
hotel-reservation services, affects these services’ cost or quality, or is oth-
erwise necessary for competitors to use. In any event, we have no occa-
sion to decide the applicability of §1052(e)’s functionality bar, for the sole
ground on which the PTO refused registration, and the sole claim before
us, is that “Booking.com” is generic.
Cite as: 591 U. S. ____ (2020) 11
Opinion of the Court
. . . , it cannot deprive competing manufacturers of the prod-
uct of the right to call an article by its name.” Abercrombie
& Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (CA2
1976). That principle presupposes that a generic term
is at issue. But the PTO’s only legal basis for deeming
“generic.com” terms generic is its mistaken reliance on
Goodyear.
While we reject the rule proffered by the PTO that
“generic.com” terms are generic names, we do not embrace
a rule automatically classifying such terms as nongeneric.
Whether any given “generic.com” term is generic, we hold,
depends on whether consumers in fact perceive that term
as the name of a class or, instead, as a term capable of dis-
tinguishing among members of the class.6
B
The PTO, echoed by the dissent, post, at 10–12, objects
that protecting “generic.com” terms as trademarks would
——————
6 Evidence informing that inquiry can include not only consumer sur-
veys, but also dictionaries, usage by consumers and competitors, and any
other source of evidence bearing on how consumers perceive a term’s
meaning. Surveys can be helpful evidence of consumer perception but
require care in their design and interpretation. See Brief for Trademark
Scholars as Amici Curiae 18–20 (urging that survey respondents may
conflate the fact that domain names are exclusive with a conclusion that
a given “generic.com” term has achieved secondary meaning). Moreover,
difficult questions may be presented when a term has multiple concur-
rent meanings to consumers or a meaning that has changed over time.
See, e.g., 2 J. McCarthy, Trademarks and Unfair Competition §12:51 (5th
ed. 2019) (discussing terms that are “a generic name to some, a trade-
mark to others”); id., §12:49 (“Determining the distinction between ge-
neric and trademark usage of a word . . . when there are no other sellers
of [the good or service] is one of the most difficult areas of trademark
law.”). Such issues are not here entailed, for the PTO does not contest
the lower courts’ assessment of consumer perception in this case. See
Pet. for Cert. I; Brief for Petitioners 17–18. For the same reason, while
the dissent questions the evidence on which the lower courts relied, post,
at 7–8, 9, we have no occasion to reweigh that evidence. Cf. post, at 1–2
(SOTOMAYOR, J., concurring).
12 PATENT AND TRADEMARK OFFICE v. BOOKING.COM B. V.
Opinion of the Court
disserve trademark law’s animating policies. We disagree.
The PTO’s principal concern is that trademark protection
for a term like “Booking.com” would hinder competitors.
But the PTO does not assert that others seeking to offer
online hotel-reservation services need to call their services
“Booking.com.” Rather, the PTO fears that trademark pro-
tection for “Booking.com” could exclude or inhibit competi-
tors from using the term “booking” or adopting domain
names like “ebooking.com” or “hotel-booking.com.” Brief for
Petitioners 27–28. The PTO’s objection, therefore, is not to
exclusive use of “Booking.com” as a mark, but to undue con-
trol over similar language, i.e., “booking,” that others
should remain free to use.
That concern attends any descriptive mark. Responsive
to it, trademark law hems in the scope of such marks short
of denying trademark protection altogether. Notably, a
competitor’s use does not infringe a mark unless it is likely
to confuse consumers. See §§1114(1), 1125(a)(1)(A); 4
McCarthy §23:1.50 (collecting state law). In assessing the
likelihood of confusion, courts consider the mark’s distinc-
tiveness: “The weaker a mark, the fewer are the junior uses
that will trigger a likelihood of consumer confusion.” 2 id.,
§11:76. When a mark incorporates generic or highly de-
scriptive components, consumers are less likely to think
that other uses of the common element emanate from the
mark’s owner.
Ibid. Similarly, “[i]n a ‘crowded’ field of look-
alike marks” (e.g., hotel names including the word “grand”),
consumers “may have learned to carefully pick out” one
mark from another.
Id., §11:85. And even where some con-
sumer confusion exists, the doctrine known as classic fair
use, see
id., §11:45, protects from liability anyone who uses
a descriptive term, “fairly and in good faith” and “otherwise
than as a mark,” merely to describe her own goods.
15
U.S. C. §1115(b)(4); see KP Permanent Make-Up, Inc. v.
Lasting Impression I, Inc.,
543 U.S. 111, 122–123 (2004).
Cite as: 591 U. S. ____ (2020) 13
Opinion of the Court
These doctrines guard against the anticompetitive ef-
fects the PTO identifies, ensuring that registration of
“Booking.com” would not yield its holder a monopoly on the
term “booking.” Booking.com concedes that “Booking.com”
would be a “weak” mark. Tr. of Oral Arg. 66. See also id.,
at 42–43, 55. The mark is descriptive, Booking.com recog-
nizes, making it “harder . . . to show a likelihood of confu-
sion.”
Id., at 43. Furthermore, because its mark is one of
many “similarly worded marks,” Booking.com accepts that
close variations are unlikely to infringe.
Id., at 66. And
Booking.com acknowledges that federal registration of
“Booking.com” would not prevent competitors from using
the word “booking” to describe their own services.
Id., at
55.
The PTO also doubts that owners of “generic.com” brands
need trademark protection in addition to existing competi-
tive advantages. Booking.com, the PTO argues, has al-
ready seized a domain name that no other website can use
and is easy for consumers to find. Consumers might enter
“the word ‘booking’ in a search engine,” the PTO observes,
or “proceed directly to ‘booking.com’ in the expectation that
[online hotel-booking] services will be offered at that ad-
dress.” Brief for Petitioners 32. Those competitive ad-
vantages, however, do not inevitably disqualify a mark from
federal registration. All descriptive marks are intuitively
linked to the product or service and thus might be easy for
consumers to find using a search engine or telephone direc-
tory. The Lanham Act permits registration nonetheless.
See §1052(e), (f ). And the PTO fails to explain how the ex-
clusive connection between a domain name and its owner
makes the domain name a generic term all should be free
to use. That connection makes trademark protection more
appropriate, not less.
See supra, at 9.
Finally, even if “Booking.com” is generic, the PTO urges,
unfair-competition law could prevent others from passing
off their services as Booking.com’s. Cf. Genesee Brewing Co.
14 PATENT AND TRADEMARK OFFICE v. BOOKING.COM B. V.
Opinion of the Court
v. Stroh Brewing Co., 124 F.3d 137, 149 (CA2 1997);
Blinded Veterans Assn. v. Blinded Am. Veterans Founda-
tion,
872 F.2d 1035, 1042–1048 (CADC 1989). But federal
trademark registration would offer Booking.com greater
protection. See, e.g., Genesee
Brewing, 124 F.3d, at 151
(unfair-competition law would oblige competitor at most to
“make more of an effort” to reduce confusion, not to cease
marketing its product using the disputed term); Matal, 582
U. S., at ___ (slip op., at 5) (federal registration confers val-
uable benefits); Brief for Respondent 26 (expressing inten-
tion to seek protections available to trademark owners un-
der the Anticybersquatting Consumer Protection Act,
15
U.S. C. §1125(d)); Brief for Coalition of .Com Brand Own-
ers as Amici Curiae 14–19 (trademark rights allow mark
owners to stop domain-name abuse through private dispute
resolution without resorting to litigation). We have no
cause to deny Booking.com the same benefits Congress ac-
corded other marks qualifying as nongeneric.
* * *
The PTO challenges the judgment below on a sole ground:
It urges that, as a rule, combining a generic term with
“.com” yields a generic composite. For the above-stated rea-
sons, we decline a rule of that order, one that would largely
disallow registration of “generic.com” terms and open the
door to cancellation of scores of currently registered marks.
Accordingly, the judgment of the Court of Appeals for the
Fourth Circuit regarding eligibility for trademark registra-
tion is
Affirmed.
Cite as: 591 U. S. ____ (2020) 1
SOTOMAYOR, J., concurring
SUPREME COURT OF THE UNITED STATES
_________________
No. 19–46
_________________
UNITED STATES PATENT AND TRADEMARK OFFICE,
ET AL., PETITIONERS v. BOOKING.COM B. V.
ON WRIT OF CERTIORARI TO THE UNITED STATES COURT OF
APPEALS FOR THE FOURTH CIRCUIT
[June 30, 2020]
JUSTICE SOTOMAYOR, concurring.
The question before the Court here is simple: whether
there is a nearly per se rule against trademark protection
for a “generic.com” term. See ante, at 7–8; post, at 10
(BREYER, J., dissenting). I agree with the Court that there
is no such rule, a holding that accords with how the U. S.
Patent and Trademark Office (PTO) has treated such terms
in the past. See ante, at 8 (noting that the “PTO’s own past
practice appears to reflect no such comprehensive rule”). I
add two observations.
First, the dissent wisely observes that consumer-survey
evidence “may be an unreliable indicator of genericness.”
Post, at 9–10. Flaws in a specific survey design, or weak-
nesses inherent in consumer surveys generally, may limit
the probative value of surveys in determining whether a
particular mark is descriptive or generic in this context.
But I do not read the Court’s opinion to suggest that surveys
are the be-all and end-all. As the Court notes, sources such
as “dictionaries, usage by consumers and competitors, and
any other source of evidence bearing on how consumers per-
ceive a term’s meaning” may also inform whether a mark is
generic or descriptive. Ante, at 11, n. 6.
Second, the PTO may well have properly concluded,
based on such dictionary and usage evidence, that Book-
ing.com is in fact generic for the class of services at issue
2 PATENT AND TRADEMARK OFFICE v. BOOKING.COM B. V.
SOTOMAYOR, J., concurring
here, and the District Court may have erred in concluding
to the contrary. But that question is not before the Court.
With these understandings, I concur in the Court’s opinion.
Cite as: 591 U. S. ____ (2020) 1
BREYER, J., dissenting
SUPREME COURT OF THE UNITED STATES
_________________
No. 19–46
_________________
UNITED STATES PATENT AND TRADEMARK OFFICE,
ET AL., PETITIONERS v. BOOKING.COM B. V.
ON WRIT OF CERTIORARI TO THE UNITED STATES COURT OF
APPEALS FOR THE FOURTH CIRCUIT
[June 30, 2020]
JUSTICE BREYER, dissenting.
What is Booking.com? To answer this question, one need
only consult the term itself. Respondent provides an online
booking service. The company’s name informs the con-
sumer of the basic nature of its business and nothing more.
Therein lies the root of my disagreement with the majority.
Trademark law does not protect generic terms, meaning
terms that do no more than name the product or service it-
self. This principle preserves the linguistic commons by
preventing one producer from appropriating to its own ex-
clusive use a term needed by others to describe their goods
or services. Today, the Court holds that the addition of
“.com” to an otherwise generic term, such as “booking,” can
yield a protectable trademark. Because I believe this result
is inconsistent with trademark principles and sound trade-
mark policy, I respectfully dissent.
I
A
Trademark law protects those “ ‘distinctive marks—
words, names, symbols, and the like’ ” that “ ‘distinguish a
particular artisan’s goods from those of others.’ ” Matal v.
Tam, 582 U. S. ___, ___ (2017) (slip op., at 2) (quoting B&B
Hardware, Inc. v. Hargis Industries, Inc., 575 U.S. 138, 142
(2015)). To determine whether a given term is sufficiently
2 PATENT AND TRADEMARK OFFICE v. BOOKING.COM B. V.
BREYER, J., dissenting
distinctive to serve as a trademark, courts generally place
it in one of five categories. The first four kinds of terms are
eligible for federal trademark registration. The fifth is not.
I list the first three only to give context and allow com-
parisons. They are: (1) “ ‘fanciful’ ” terms, such as “Kodak”
(film); (2) “ ‘arbitrary’ ” terms, such as “Camel” (cigarettes);
and (3) “ ‘suggestive’ ” terms, such as “Tide” (laundry deter-
gent). Ante, at 3. These kinds of terms are “ ‘inherently
distinctive.’ ” Ibid. The public can readily understand that
they identify and distinguish the goods or services of one
firm from those of all others. See Two Pesos, Inc. v. Taco
Cabana, Inc.,
505 U.S. 763, 768 (1992). By preventing oth-
ers from copying a distinctive mark, trademark law “pro-
tect[s] the ability of consumers to distinguish among com-
peting producers” and “secure[s] to the owner of the mark
the goodwill of his business.” Park ’N Fly, Inc. v. Dollar
Park & Fly, Inc.,
469 U.S. 189, 198 (1985). Ultimately, the
purpose of trademark law is to “foster competition” and
“suppor[t] the free flow of commerce.” Matal, 582 U. S.,
at ___ (slip op., at 3) (internal quotation marks omitted).
This case concerns two further categories. There are “de-
scriptive” terms, such as “Best Buy” (electronics) or “First
National Bank” (banking services), that “immediately
conve[y] information concerning a feature, quality, or char-
acteristic” of the producer’s goods or services. In re North
Carolina Lottery,
866 F.3d 1363, 1367 (CA Fed. 2017). A
descriptive term can be registered as a trademark only if it
acquires “secondary meaning”—i.e., the public has come to
associate it with a particular firm or its product. Two
Pesos,
505 U.S., at 769.
There are also “generic” terms, such as “wine” or “hair-
cuts.” They do nothing more than inform the consumer of
the kind of product that the firm sells. We have called ge-
neric terms “descriptive of a class of goods.” Goodyear’s In-
dia Rubber Glove Mfg. Co. v. Goodyear Rubber Co.,
128
U.S. 598, 602 (1888). And we have said that they simply
Cite as: 591 U. S. ____ (2020) 3
BREYER, J., dissenting
convey the “genus of which the particular product is a spe-
cies.” Park ’N Fly, 469 U.S., at 196. A generic term is not
eligible for use as a trademark. That principle applies even
if a particular generic term “ha[s] become identified with a
first user” in the minds of the consuming public. CES Pub-
lishing Corp. v. St. Regis Publications, Inc.,
531 F.2d 11, 13
(CA2 1975) (Friendly, J.). The reason is simple. To hold
otherwise “would grant the owner of the mark a monopoly,
since a competitor could not describe his goods as what they
are.”
Ibid.
Courts have recognized that it is not always easy to dis-
tinguish generic from descriptive terms. See, e.g., Aber-
crombie & Fitch Co. v. Hunting World, Inc.,
537 F.2d 4, 9
(CA2 1976) (Friendly, J.). It is particularly difficult to do so
when a firm wishes to string together two or more generic
terms to create a compound term. Despite the generic na-
ture of its component parts, the term as a whole is not nec-
essarily generic. In such cases, courts must determine
whether the combination of generic terms conveys some dis-
tinctive, source-identifying meaning that each term, indi-
vidually, lacks. See 2 J. McCarthy, Trademarks and Unfair
Competition §12:39 (5th ed. June 2020 update) (McCarthy).
If the meaning of the whole is no greater than the sum of
its parts, then the compound is itself generic. See Princeton
Vanguard, LLC v. Frito-Lay North Am., Inc.,
786 F.3d 960,
966–967 (CA Fed. 2015); In re Gould Paper Corp.,
834 F.2d
1017, 1018 (CA Fed. 1987) (registration is properly denied
if “the separate words joined to form a compound have a
meaning identical to the meaning common usage would as-
cribe to those words as a compound”); see also 2 McCarthy
§12:39 (collecting examples of compound terms held to be
generic).
In Goodyear,
128 U.S. 598, we held that appending the
word “ ‘Company’ ” to the generic name for a class of goods
does not yield a protectable compound term.
Id., at 602–
603. The addition of a corporate designation, we explained,
4 PATENT AND TRADEMARK OFFICE v. BOOKING.COM B. V.
BREYER, J., dissenting
“only indicates that parties have formed an association or
partnership to deal in such goods.”
Id., at 602.
For in-
stance, “parties united to produce or sell wine, or to raise
cotton or grain,” may well “style themselves Wine Com-
pany, Cotton Company, or Grain Company.”
Ibid. But they
would not thereby gain the right to exclude others from the
use of those terms “for the obvious reason that all persons
have a right to deal in such articles, and to publish the fact
to the world.”
Id., at 603. “[I]ncorporation of a company in
the name of an article of commerce, without other specifica-
tion,” we concluded, does not “create any exclusive right to
the use of the name.”
Ibid.
I cannot agree with respondent that the 1946 Lanham
Act “repudiate[d] Goodyear and its ilk.” Brief for Respond-
ent 39. It is true that the Lanham Act altered the common
law in certain important respects. Most significantly, it ex-
tended trademark protection to descriptive marks that
have acquired secondary meaning. See Qualitex Co. v. Ja-
cobson Products Co.,
514 U.S. 159, 171 (1995). But it did
not disturb the basic principle that generic terms are ineli-
gible for trademark protection, and nothing in the Act sug-
gests that Congress intended to overturn Goodyear. We
normally assume that Congress did not overturn a common-
law principle absent some indication to the contrary. See
Astoria Fed. Sav. & Loan Assn. v. Solimino,
501 U.S. 104,
108 (1991). I can find no such indication here. Perhaps that
is why the lower courts, the Trademark Trial and Appeal
Board (TTAB), the U. S. Patent and Trademark Office’s
(PTO) Trademark Manual of Examining Procedure
(TMEP), and leading treatises all recognize Goodyear’s con-
tinued validity. See, e.g., In re Detroit Athletic Co.,
903
F.3d 1297, 1304 (CA Fed. 2018); In re Katch, LLC,
2019 WL
2560528, *10 (TTAB 2019); TMEP §§1209.03(d) (Oct. 2018);
2 McCarthy §12:39; 4 L. Altman & M. Pollack, Callmann on
Unfair Competition, Trademarks and Monopolies §18:11
(4th ed., June 2020 update).
Cite as: 591 U. S. ____ (2020) 5
BREYER, J., dissenting
More fundamentally, the Goodyear principle is sound as
a matter of law and logic. Goodyear recognized that desig-
nations such as “Company,” “Corp.,” and “Inc.” merely indi-
cate corporate form and therefore do nothing to distinguish
one firm’s goods or services from all others’. 128 U.S., at
602. It follows that the addition of such a corporate desig-
nation does not “magically transform a generic name for a
product or service into a trademark, thereby giving a right
to exclude others.” 2 McCarthy §12:39. In other words,
where a compound term consists simply of a generic term
plus a corporate designation, the whole is necessarily no
greater than the sum of its parts.
B
This case requires us to apply these principles in the
novel context of internet domain names. Respondent seeks
to register a term, “Booking.com,” that consists of a generic
term, “booking” (known as the second-level domain) plus
“.com” (known as the top-level domain). The question at
issue here is whether a term that takes the form
“generic.com” is generic in the ordinary course. In my view,
appending “.com” to a generic term ordinarily yields no
meaning beyond that of its constituent parts. Because the
term “Booking.com” is just such an ordinary “generic.com”
term, in my view, it is not eligible for trademark registra-
tion.
Like the corporate designations at issue in Goodyear, a
top-level domain such as “.com” has no capacity to identify
and distinguish the source of goods or services. It is merely
a necessary component of any web address. See 1 McCar-
thy §7:17.50. When combined with the generic name of a
class of goods or services, “.com” conveys only that the
owner operates a website related to such items. Just as
“Wine Company” expresses the generic concept of a com-
pany that deals in wine, “wine.com” connotes only a website
that does the same. The same is true of “Booking.com.” The
6 PATENT AND TRADEMARK OFFICE v. BOOKING.COM B. V.
BREYER, J., dissenting
combination of “booking” and “.com” does not serve to “iden-
tify a particular characteristic or quality of some thing; it
connotes the basic nature of that thing”—the hallmark of a
generic term. Blinded Veterans Assn. v. Blinded Am. Vet-
erans Foundation, 872 F.2d 1035, 1039 (CADC 1989) (Gins-
burg, J. for the court) (emphasis added; internal quotation
marks omitted).
When a website uses an inherently distinctive second-
level domain, it is obvious that adding “.com” merely de-
notes a website associated with that term. Any reasonably
well-informed consumer would understand that “post-
it.com” is the website associated with Post-its. See Minne-
sota Min. & Mfg. Co. v. Taylor,
21 F. Supp. 2d 1003, 1005
(Minn. 1998). Likewise, “plannedparenthood.com” is obvi-
ously just the website of Planned Parenthood. See Planned
Parenthood Federation of Am., Inc. v. Bucci,
1997 WL
133313, *8 (SDNY, Mar. 24, 1997). Recognizing this feature
of domain names, courts generally ignore the top-level do-
main when analyzing likelihood of confusion. See
Brookfield Communications, Inc. v. West Coast Entertain-
ment Corp.,
174 F.3d 1036, 1055 (CA9 1999).
Generic second-level domains are no different. The
meaning conveyed by “Booking.com” is no more and no less
than a website associated with its generic second-level do-
main, “booking.” This will ordinarily be true of any generic
term plus “.com” combination. The term as a whole is just
as generic as its constituent parts. See 1 McCarthy
§7:17.50; 2
id., §12:39.50.
There may be exceptions to this rule in rare cases where
the top-level domain interacts with the generic second-level
domain in such a way as to produce meaning distinct from
that of the terms taken individually. See ante, at 8, n. 4.
Likewise, the principles discussed above may apply differ-
ently to the newly expanded universe of top-level domains,
such as “.guru,” “.club,” or “.vip,” which may “conve[y] infor-
mation concerning a feature, quality, or characteristic” of
Cite as: 591 U. S. ____ (2020) 7
BREYER, J., dissenting
the website at issue. In re North Carolina Lottery, 866
F.3d, at 1367; see also Brief for International Trademark
Association as Amicus Curiae 10–11; TMEP § 1209.03(m).
These scenarios are not presented here, as “Booking.com”
conveys only a website associated with booking.
C
The majority believes that Goodyear is inapposite be-
cause of the nature of the domain name system. Because
only one entity can hold the contractual rights to a particu-
lar domain name at a time, it contends, consumers may in-
fer that a “generic.com” domain name refers to some specific
entity. Ante, at 9.
That fact does not distinguish Goodyear. A generic term
may suggest that it is associated with a specific entity.
That does not render it nongeneric. For example, “Wine,
Inc.” implies the existence of a specific legal entity incorpo-
rated under the laws of some State. Likewise, consumers
may perceive “The Wine Company” to refer to some specific
company rather than a genus of companies. But the addi-
tion of the definite article “the” obviously does not trans-
form the generic nature of that term. See In re The Com-
puter Store, Inc., 211 U.S.P.Q. (BNA) 72, 74–75 (TTAB 1981). True,
these terms do not carry the exclusivity of a domain name.
But that functional exclusivity does not negate the principle
animating Goodyear: Terms that merely convey the nature
of the producer’s business should remain free for all to use.
See 128 U.S., at 603.
This case illustrates the difficulties inherent in the ma-
jority’s fact-specific approach. The lower courts determined
(as the majority highlights), that consumers do not use the
term “Booking.com” to refer to the class of hotel reservation
websites in ordinary speech.
915 F.3d 171, 181–183 (CA4
2019); ante, at 7. True, few would call Travelocity a “Book-
ing.com.”
Ibid. But literal use is not dispositive.
See 915
F.3d, at 182; H. Marvin Ginn Corp. v. International Assn.
8 PATENT AND TRADEMARK OFFICE v. BOOKING.COM B. V.
BREYER, J., dissenting
of Fire Chiefs, Inc., 782 F.2d 987, 989–990 (CA Fed. 1986).
Consumers do not use the term “Wine, Incs.” to refer to pur-
veyors of wine. Still, the term “Wine, Inc.” is generic be-
cause it signifies only a company incorporated for that pur-
pose. See
Goodyear, 128 U.S., at 602–603. Similarly,
“Booking, Inc.” may not be trademarked because it signifies
only a booking company. The result should be no different
for “Booking.com,” which signifies only a booking website.
More than that, many of the facts that the Court sup-
poses may distinguish some “generic.com” marks as de-
scriptive and some as generic are unlikely to vary from case
to case. There will never be evidence that consumers liter-
ally refer to the relevant class of online merchants as
“generic.coms.” Nor are “generic.com” terms likely to ap-
pear in dictionaries. And the key fact that, in the majority’s
view, distinguishes this case from Goodyear—that only one
entity can own the rights to a particular domain name at a
time—is present in every “generic.com” case. See ante, at
9.
What, then, stands in the way of automatic trademark
eligibility for every “generic.com” domain? Much of the
time, that determination will turn primarily on survey evi-
dence, just as it did in this case.
See 915 F.3d, at 183–184.
However, survey evidence has limited probative value in
this context. Consumer surveys often test whether consum-
ers associate a term with a single source. See 2 McCarthy
§12:14–12:16 (describing types of consumer surveys). But
it is possible for a generic term to achieve such an associa-
tion—either because that producer has enjoyed a period of
exclusivity in the marketplace, e.g., Kellogg Co. v. National
Biscuit Co.,
305 U.S. 111, 118–119 (1938), or because it has
invested money and effort in securing the public’s identifi-
cation, e.g.,
Abercrombie, 537 F.2d, at 9. Evidence of such
an association, no matter how strong, does not negate the
generic nature of the term.
Ibid. For that reason, some
courts and the TTAB have concluded that survey evidence
Cite as: 591 U. S. ____ (2020) 9
BREYER, J., dissenting
is generally of little value in separating generic from de-
scriptive terms. See Schwan’s IP, LLC v. Kraft Pizza Co.,
460 F.3d 971, 975–976 (CA8 2006); Hunt Masters, Inc. v.
Landry’s Seafood Restaurant, Inc.,
240 F.3d 251, 254–255
(CA4 2001); A. J. Canfield Co. v. Honickman,
808 F.2d 291,
301–303 (CA3 1986); Miller Brewing Co. v. Jos. Schlitz
Brewing Co.,
605 F.2d 990, 995 (CA7 1979); In re Hikari
Sales USA, Inc.,
2019 WL 1453259, *13 (TTAB 2019). Alt-
hough this is the minority viewpoint, see 2 McCarthy
§12:17.25, I nonetheless find it to be the more persuasive
one.
Consider the survey evidence that respondent introduced
below. Respondent’s survey showed that 74.8% of partici-
pants thought that “Booking.com” is a brand name,
whereas 23.8% believed it was a generic name. App. 66. At
the same time, 33% believed that “Washingmachine.com”—
which does not correspond to any company—is a brand, and
60.8% thought it was generic.
Ibid.
What could possibly account for that difference? “Book-
ing.com” is not inherently more descriptive than
“Washingmachine.com” or any other “generic.com.” The
survey participants who identified “Booking.com” as a
brand likely did so because they had heard of it, through
advertising or otherwise. If someone were to start a com-
pany called “Washingmachine.com,” it could likely secure a
similar level of consumer identification by investing heavily
in advertising. Would that somehow transform the nature
of the term itself? Surely not. This hypothetical shows that
respondent’s survey tested consumers’ association of “Book-
ing.com” with a particular company, not anything about the
term itself. But such association does not establish that a
term is nongeneric. See
Kellogg, 305 U.S., at 118–119;
Abercrombie, 537 F.2d, at 9.
Under the majority’s approach, a “generic.com” mark’s el-
igibility for trademark protection turns primarily on survey
10 PATENT AND TRADEMARK OFFICE v. BOOKING.COM B. V.
BREYER, J., dissenting
data, which, as I have explained, may be an unreliable in-
dicator of genericness. As the leading treatise writer in this
field has observed, this approach “[d]iscard[s] the predicta-
ble and clear line rule of the [PTO] and the Federal Circuit”
in favor of “a nebulous and unpredictable zone of generic
name and top level domain combinations that somehow be-
come protectable marks when accompanied by favorable
survey results.” 1 McCarthy §7:17.50. I would heed this
criticism. In my view, a term that takes the form
“generic.com” is not eligible for federal trademark registra-
tion, at least not ordinarily. There being no special circum-
stance here, I believe that “Booking.com” is a generic term
not eligible for federal registration as a trademark.
II
In addition to the doctrinal concerns discussed above,
granting trademark protection to “generic.com” marks
threatens serious anticompetitive consequences in the
online marketplace.
The owners of short, generic domain names enjoy all the
advantages of doing business under a generic name. These
advantages exist irrespective of the trademark laws. Ge-
neric names are easy to remember. Because they immedi-
ately convey the nature of the business, the owner needs to
expend less effort and expense educating consumers. See
Meystedt, What Is My URL Worth? Placing a Value on Pre-
mium Domain Names, 19 Valuation Strategies 10, 12
(2015) (Meystedt) (noting “ability to advertise a single URL
and convey exactly what business a company operates”); cf.
Folsom & Teply, Trademarked Generic Words, 89 Yale L. J.
1323, 1337–1338 (1980) (Folsom & Teply) (noting “ ‘free ad-
vertising’ effect”). And a generic business name may create
the impression that it is the most authoritative and trust-
worthy source of the particular good or service. See
Meystedt 12 (noting that generic domain names inspire
“[i]nstant trust and credibility” and “[a]uthority status in
Cite as: 591 U. S. ____ (2020) 11
BREYER, J., dissenting
an industry”); cf. Folsom & Teply 1337, n. 79 (noting that
consumers may believe that “no other product is the ‘real
thing’ ”). These advantages make it harder for distinctively
named businesses to compete.
Owners of generic domain names enjoy additional com-
petitive advantages unique to the internet—again, regard-
less of trademark protection. Most importantly, domain
name ownership confers automatic exclusivity. Multiple
brick-and-mortar companies could style themselves “The
Wine Company,” but there can be only one “wine.com.” And
unlike the trademark system, that exclusivity is world-
wide.
Generic domains are also easier for consumers to find. A
consumer who wants to buy wine online may perform a key-
word search and be directed to “wine.com.” Or he may
simply type “wine.com” into his browser’s address bar, ex-
pecting to find a website selling wine. See Meystedt 12 (not-
ing “ability to rank higher on search engines” and “ability
to use existing type-in traffic to generate additional sales”);
see also 915 F.3d, at 189 (Wynn, J., concurring in part and
dissenting in part). The owner of a generic domain name
enjoys these benefits not because of the quality of her prod-
ucts or the goodwill of her business, but because she was
fortunate (or savvy) enough to be the first to appropriate a
particularly valuable piece of online real estate.
Granting trademark protection to “generic.com” marks
confers additional competitive benefits on their owners by
allowing them to exclude others from using similar domain
names. Federal registration would allow respondent to
threaten trademark lawsuits against competitors using do-
mains such as “Bookings.com,” “eBooking.com,”
“Booker.com,” or “Bookit.com.” Respondent says that it
would not do so. See Tr. of Oral Arg. 55–56. But other firms
may prove less restrained.
Indeed, why would a firm want to register its domain
name as a trademark unless it wished to extend its area of
12 PATENT AND TRADEMARK OFFICE v. BOOKING.COM B. V.
BREYER, J., dissenting
exclusivity beyond the domain name itself? The domain
name system, after all, already ensures that competitors
cannot appropriate a business’s actual domain name. And
unfair-competition law will often separately protect busi-
nesses from passing off and false advertising. See Genesee
Brewing Co. v. Stroh Brewing Co., 124 F.3d 137, 149 (CA2
1997); 2 McCarthy §12:2.
Under the majority’s reasoning, many businesses could
obtain a trademark by adding “.com” to the generic name of
their product (e.g., pizza.com, flowers.com, and so forth). As
the internet grows larger, as more and more firms use it to
sell their products, the risk of anticompetitive consequences
grows. Those consequences can nudge the economy in an
anticompetitive direction. At the extreme, that direction
points towards one firm per product, the opposite of the
competitive multifirm marketplace that our basic economic
laws seek to achieve.
Not to worry, the Court responds, infringement doctrines
such as likelihood of confusion and fair use will restrict the
scope of protection afforded to “generic.com” marks. Ante,
at 12–13. This response will be cold comfort to competitors
of “generic.com” brands. Owners of such marks may seek
to extend the boundaries of their marks through litigation,
and may, at times succeed. See, e.g., Advertise.com v. AOL,
LLC,
2010 WL 11507594 (CD Cal.) (owner of “Advertis-
ing.com” obtained preliminary injunction against competi-
tor’s use of “Advertise.com”), vacated in part,
616 F.3d 974
(CA9 2010). Even if ultimately unsuccessful, the threat of
costly litigation will no doubt chill others from using vari-
ants on the registered mark and privilege established firms
over new entrants to the market. See Brief for Electronic
Frontier Foundation as Amicus Curiae 19–20.
* * *
In sum, the term “Booking.com” refers to an internet
Cite as: 591 U. S. ____ (2020) 13
BREYER, J., dissenting
booking service, which is the generic product that respond-
ent and its competitors sell. No more and no less. The same
is true of “generic.com” terms more generally. By making
such terms eligible for trademark protection, I fear that to-
day’s decision will lead to a proliferation of “generic.com”
marks, granting their owners a monopoly over a zone of use-
ful, easy-to-remember domains. This result would tend to
inhibit, rather than to promote, free competition in online
commerce. I respectfully dissent.
