International Amicus Committee Update: INTA Files Amicus Brief in U.S. Supreme Court Case Regarding Registrability of BOOKING.COM

INTA filed an amicus curiae brief in the United States Supreme Court on February 19, 2020, in the case of United States Patent and Trademark Office v. Booking.com B.V. The case is set for oral argument on March 23, 2020.

Booking.com B.V. (Booking.com) operates a website where its customers can book travel and hotel accommodations. The United States Patent and Trademark Office (USPTO) refused the company’s applications to register BOOKING.COM on genericness grounds. The Trademark Trial and Appeal Board agreed with the USPTO’s examiner’s decision.

Booking.com appealed to the Eastern District of Virginia, arguing that BOOKING.COM was descriptive or suggestive, and thus eligible for protection. In support of its position, the company submitted a Teflon survey. (See definition of Teflon survey below.) The survey indicated that 74.8 percent of consumers recognized BOOKING.COM as a brand rather than a generic term. The district court held that the mark was descriptive, had acquired secondary meaning, and was thus eligible for registration. The Court of Appeals for the Fourth Circuit affirmed.

The USPTO’s petition for certiorari review was granted on November 8, 2019, to consider the question of whether the addition of a generic top-level domain (gTLD), that is, “.com”, to an otherwise generic term can create a protectable trademark.

Can GENERIC.COM Be Registered as a Trademark?

More than a century ago, in Goodyear’s Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U.S. 598 (1888), the U.S. Supreme Court held that the addition of an entity designation, like “company,” to an otherwise generic term does not create a registrable trademark. In the instant case, the USPTO relied on Goodyear to bar the registration of BOOKING.COM and to argue that the Teflon survey evidence was irrelevant because evidence of commercial success cannot convert a generic term into a trademark.

By contrast, Booking.com argued that the 1984 amendments to the Lanham Act codified the test for genericness, namely to determine “the primary significance” of the term to the relevant public. 15 U.S.C. § 1064(c). Booking.com, among others, argue that this fact-based test applies both to initial registration determinations and to cancellations, as well as to all types of marks, including domain names.

INTA Advocates for the Courts to Consider Teflon Survey Evidence and Avoid Per Se Rules

INTA’s amicus brief supported the respondent, Booking.com, arguing three primary points:

INTA explained that the Court should avoid per se rules concerning the registrability of a generic term plus a gTLD. Drawing the line between generic and descriptive marks is difficult and has significant consequences. In today’s digital era, a hard rule could, in unpredictable ways, also affect marks that are also domain names.
Properly conducted Teflon surveys should be considered, when present, to determine whether a term is generic. Reviewing the legislative history, INTA identified that when Congress codified the primary significance test used to evaluate genericness, it specifically intended that survey evidence would be admissible. Moreover, rejecting survey evidence of consumer understanding in genericness cases wrongly assumes the disputed conclusion that the mark is generic.
INTA argued that Goodyear, disallowing trademark protection when “company” is added to a generic term, is outdated precedent. More modern case law classifying vanity phone numbers as descriptive provides a better framework. See In re Dial-A-Mattress, 240 F.3d 1341 (Fed. Cir. 2001). In fact, the Eastern District of Virginia even noted in its decision that the analysis employed in phone number cases “maps seamlessly onto TLDs.”

INTA’s amicus brief in Booking.com was written by Lawrence Nodine and Samuel Mullman (Ballard Spahr LLP, Atlanta, Georgia, USA), Martin Schwimmer (Leason Ellis LLP, White Plains, New York, USA), J. Justin Ourso III (Ourso Counsels, LLC, Baton Rouge, Louisiana, USA), and Jennifer Gregor (Godfrey & Kahn, S.C., Madison, Wisconsin, USA).

Teflon survey: According to J. Thomas McCarthy, “the most widely used survey format to resolve a genericness challenge is the ‘Teflon’ format. The name comes from a 1973 telephone survey used as evidence by a court to determine that TEFLON was a valid trademark, not a generic name for non-stick coating.” J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, §12:16, at 12‒64 (5th ed. 2019).

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.