Can a company engaged in the business of making pizzas, register their brand and domain name as “pizza.com”? A simple answer to this is NO. Almost every nation out there, be it India, the UK or the US, prohibits registration of a generic and descriptive name, that is, a word clearly identifying a product or service the brand is engaged in. For instance, a company dealing with marketing of cars cannot be registered as ‘Cars’ or ‘Cars.com’. A similar case involving the question has reached the US Supreme Court, whether ‘booking.com’ can be granted trademark protection?
Commencement of this legal tussle dates back to early years of this decade, when the online travel and hotel accommodations booking company, ‘Booking.com’, applied for trademark registration before the United States Patent and Trademark Office (USPTO). The said applications were filed in respect of four marks, namely, a word mark for ‘Booking.com’ along with stylized representations of the same. Taking into account the generic nature of the applied marks directly describing the dealt services, USPTO outrightly rejected the registration application. Against such, the US-based travel meta-search engine filed an appeal before the Trademark Trial and Appeal Board (TTAB) and which, to their shock, seconded USPTO’s rejection.
A further appeal was filed by ‘Booking.com’ before the Eastern District Court of Virginia along with claim of civil action against USPTO. Surprisingly, the District Court’s decision gave a sigh of relief to the Appellant and the same, in February 2019, was upheld by Fourth Circuit of US Court of Appeals on the ground that, undoubtedly booking is a generic term and clearly points a finger towards the services offered, however, considering the mark ‘Booking.com’ as a whole doesn’t add up to the descriptiveness and hence, is protectable. It was observed that mere addition of ‘.com’ transformed it from a generic term to the one capable of trademark protection. Moreover, such “result in a non-generic, descriptive mark upon a showing of primary significance to the relevant public”, ruled the Fourth Circuit. Even after this, USPTO did not give up and therefore, banged the doors of US Supreme Court coming up with a writ of Certiorari.
For the first time in 231 years, the US Supreme Court heard oral arguments via digital tele-conferencing. Another notable event being, post-enactment of 1946 Lanham Act, this is the first time a dispute pertaining to registrability of generic trademark showed up before the apex Court. USPTO, before Chief Justice Roberts, substantiated its arguments by mentioning the 19th century case Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co. [28 U.S. 598 (1888)], wherein Supreme Court adjudicated that mere addition of the term ‘company’ to a descriptive name does not change its nature and hence, only a generic name appears.
With regards to the second issue, “whether the addition by an online business of a generic top-level domain (.com) to an otherwise generic term can create a protectable trademark?” questions related to need of trademark protection of the URL was raised. It was noted that, Lanham Act accommodated certain reliefs like prevention of counterfeiting or seizing of URLs in favour of registered marks only.
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