Doom’s Day- An End to 150 years of Good yearicism

USPTO v. Booking.com^[1]
This post is in continuation to our previous posts covered here and here.

The day has come and the SCOTUS (Supreme Court of the United States) has pronounced its judgment with the majority of 8:1 ratio while 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.

Notwithstanding the arguments of Petitioner-USPTO and their consistent/mistaken reliance on the 150 years old Good year[2] judgment, the court has ruled in the favor of the respondent -Booking.com, by sanctioning the ‘generic.com’ terms, a subject matter of federal trademark registration.

The ground norm for the decision of the court was the ‘ perception of the consumer’ doctrine or a test of an average man of ordinary intelligence.

The court meticulously observed that generic names for a class of goods and services are per se ineligible for registration. And if we talk about a term which is styled in a way the “booking.com” is, that is, “generic.com”, such terms shall be considered a generic term if and only if such terms are generic to its relevant consumers

The court outrightly rejected the mistaken reliance on the judgment of Good year[3] by the PTO, with the help of that the PTO makes the submission that adding a generic corporate designation like “company” to a generic term does not yield trademark eligibility and so does ‘.com’ to a term ‘booking’ will not make it a non-generic , by holding it to be an “unyielding legal rule that disregards consumer perception is incompatible with preamble of Lanham Act. The court has time and again, recognized the importance of consumer perception[4] and yet again in this case the court acknowledged that genericism of a term based on the meaning to its consumers. In other words, it means that if a word is generic in its common parlance, added to another generic word to form a new term, it shall be conferred protection if it is shown that the novel term so formulated is a brand name and not a mere association with its services, from the view point of its relevant consumers.

The court further observed that the PTO never intended to argue the genericism of the mark but was concerned about anti-competitive practices, in the sense that, according to protection to ‘booking.com’ will make the word ‘booking’ rivalrous and hence inhibiting competitors from using or adopting the domain name encompassing the words ‘booking’. For this the court answered that at most the unfair-competition law would oblige the competitors to “make more of an effort” to reduce confusion, and not to cease marketing its product using the disputed term.

At the end, Sotomayor, J., made a beautiful observation that survey evidences are not ‘ be-all and end-all’, but the court can/must draw inferences and meanings from the sources like dictionaries to draw a conlusionary view as to the perception of the consumer regarding a particular term, to further conclude about the genericism and descriptiveness of a term.

[1] Decided on Jun 30 , 2020

[2] Goodyear’s India Rubber Glove Manufacturing Co. v. Goodyear Rubber Co ,128 U.S. 598 (1888)

[3] Id.

[4] See; Coach Servs., Inc. v. Triumph Learning LLC ,668 F.3d 1356 (Fed. Cir. 2012), Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC , 507 F.3d 252 (4th Cir. 2007)