As my colleague, in his article “Trademark Incapacity Doctrine or Primary significance test: Which favours Generic mark to be recognized as a trademark?” here, laid down the doctrines for registration of Trade Marks under Lanham Act, 1946, I am now taking over from there to discuss one of the most grey areas of Trademark law (which may soon no longer be grey enough)- “whether one generic mark if added to another generic mark, makes it distinctive enough to qualify for trademark protection in USA (under The Lanham Act, 1946)?”
For this discussion, I will be detailing the case of USPTO v. Booking.com(pending judgment before the Supreme court of United States-later this June’20). Before starting with this case, it is important to reiterate the basic principles of United States’ Trademark Law. Any mark, whether it is a name, logo, word, sign, domain name, etc., can be accorded protection, if it is either inherently distinctive or has ‘acquired’ distinctiveness over time. Marks are stronger if they are either fanciful, arbitrary or suggestive, and weaker on the other side if falls under the purview of descriptive or generic marks, (generic marks being weakest, of all).
Without dwelling further into the distinctiveness of marks, I will now talk about the generic marks since the whole universe of the above-captioned case, revolves around it.“A generic term -is one that refers, or has come to be understood as referring, to the genus of which the particular product is a species”.
For Instance, if I use the word ‘Apple’ for selling the fruit Apple, then is said to be a generic mark but if the same is used for iPhone- such application of the word ‘Apple’ is considered as an arbitrary word and hence qualifies to be distinctive enough for registration.
This is what the case of ‘booking.com’ is all about. The main bone of contention for refusing the registration of the word ‘booking.com’ by the USPTO is that the use of the word ‘booking’ is generic for the booking of hotel reservation. Let us ask a simple question If I say I want to book my hotel tickets or flight tickets , would I be referring to the site – ‘Booking.com’ in an implied sense?Let us understand the nitty-gritty of “booking.com” case, to answer this question. The facts of this case are –as follows – Booking.com owns the domain name-“BOOKING.COM”, where relevant consumers can make their bookings related to travel and hotel accommodations. The respondent had been using the said domain name since 2006. Like every other owner of a mark, the respondent also sought to register a trademark on BOOKING.COM with the appellant (USPTO) for which it filed four applications, under the category of word mark and also for a stylized version of the same, under class 43- for “online hotel reservation services”.
On perusal of the application, to the astonishment of the respondent, the USPTO rejected all the four applications on the ground that the use of the mark (so mentioned in the applications ) was not distinctive and was generic if used for the stated services. The office also argued that the mark was merely a descriptive term, and the respondent had failed to show that the mark had ‘acquired’ distinctiveness for trademark protection.
For the appellant, the word- booking means no more than a reservation of services such as reservation of travel tickets, reservation of hotel room or so on. The appellant was of the opinion that mere adding of “.com” as a suffix to the term Booking, depicts nothing but a commercial website which the respondent operates via the internet. For this Appellant sought reliance on the 150 years old decision of the US supreme court, in the case of Goodyear’s India Rubber Glove Manufacturing Co. v. Goodyear Rubber Co.– wherein the court held that adding of entity designation like “ company or Inc” to the generic terms like “wine,” “cotton,” or “grain”, will not make the latter’s marks a protectable one, since such combinations of terms only depict that parties have intended to form an association to engage in the relevant goods to which they have associated the term
Per Contra, the respondent-‘booking.com’ while rejecting the arguments of the USPTO, relied on two grounds; Firstly on the Primary Significance Test– Consumer sophistication, and Secondly, that the case of Good year is not a good law any more, as it was superseded by the Lanham Act. While basing its arguments on the former ground, the respondent placed before the court, the survey evidence – of one Hal Poret- who designed Industry-standard “Teflon survey”. The use of this survey was one way of the respondent to show how the average consumer or relevant consumers perceive the term “Booking.com” (whether as a brand of some services or mere a generic term.) The survey targets those consumers who are users of the websites like the respondent’s website for booking of their lodging and boarding or travel-related arrangements. The survey put before the said consumers sought to check whether the consumers percieved ‘booking.com’ as a brand or a generic term. In turn, 74.8% identified ‘booking.com’ to be a brand name.
The respondent further placed reliance on the report of one linguistic expert to contend that even though the terms ‘booking’ and ‘.com’ are taken as generic terms in isolation, no consumer will ever understand the term ‘booking.com’ to be a reference to only and only ‘all hotel reservation services.’
The respondent further contended (on Latter ground) that introduction of Lanham Act has eclipsed the decision of the courts in the Goodyear case, on which the appellant placed its reliance while rejecting the application of the respondent. The respondent submitted that enforcement of such Act had repudiated the decision of the court in the Goodyear case which protected only technical trademarks. The Lanham Act has incorporated what was long ago proposed by the court in the case of Delaware & Hudson Canal Co.- the Primary significance test for genericness.The Act by mandating this, focusses on the perception of the sophisticated consumer to view the mark as to form the opinion whether such consumers would/could associate a mark with a particular brand or not ?
The respondent’s bone of contention was that the appellant must see how the consumers see/view the mark “as a whole” while formulating their opinion as to the protection of the trademark to the mark as mentioned in the application. Therefore, the adding of suffixes like the present one in issue to a generic term, will not make the terms devoid of distinctiveness.
Though the case is sub-judice, the present scenario is that the Fourth Circuit while affirming the decision of district court has sought to resolve the question of genericism using the primary-significance test. The court applied that test by (1) identifying the class of product or service to which the use of the mark is relevant, (2) identifying the relevant consuming public and (3) determining whether the primary significance of the mark to the relevant public is the general class of product or service.
The court of the fourth circuit on pursual of the above-mentioned tests believed that appellant-had failed in its burden to prove, to the satisfaction of the court, that relevant consumers would understand the term -Booking .com if read as a whole and would make reference to the general online hotel reservation services rather than identifying “booking.com” as a company or a brand.
The decision of the US court of appeals for the fourth circuit is under challenge in appeal, by way of Writ of certiorari before the Supreme Court of United States. Parties have concluded their arguments on May 4,2020, and are now awaiting the judgment later this month. (Click on the Foot note-1 to go to the link of the SCOTUS)
Abercrombie & Fitch Co. v. Hunting World, Inc. , 537 F.2d 4, 9-11 (2d Cir. 1976)
Delaware & Hudson Canal Co. v. Clark, 80 U.S. (13 Wall.) 311, 323, 20 L.Ed. 581 (1872)
Supra Note 1
Goodyear’s India Rubber Glove Manufacturing Co. v. Goodyear Rubber Co ,128 U.S. 598 (1888)
 15 U.S.C 1064 (3), §14 of Lanham Act
 Dr. Sarah-Jane Leslie, Princeton professor
Supra Note 8
Supra Note 6
§§ 1052, 1091(a) of Lanham Act,1946