U.S. Supreme Court laid down the ruling for the scope of distinctiveness in General terms.

Introduction with the term “Generic” 

The literal meaning of a generic term is “a word or phrase that cannot acquire a secondary meaning because it is a general or common term for the product or service offered”. However, using a generic term as a trademark is a tricky play, SUN is a good example of an arbitrary trademark reason being as it is used for computer products and its extensive use has acquired distinctiveness. Indian Trademarks Act of 1999 prohibits the registration of generic trademarks under section 9(1). However, section 32 provides an exception to this rule. Indian courts have repeatedly emphasized that a generic word is eligible for legal protection, but the burden of proof on the person claiming distinctness in favor of a generic or descriptive mark is much higher. The owner of a generic trademark has limited enforcement rights. If generic words are combined to make a trademark, its distinctiveness may be argued.In the case of Delhivery Pvt Ltd v. Treasure Vase Ventures Pvt. Ltd (CS(COMM) 217/2020) court determined that the name “DELHIVERY” is a phonetically generic term and cannot be registered as a trademark. The plaintiff’s attempt to alter the English language word is not permissible. Similarly, the defendant’s name “DELIVER-E” is also generic and cannot be trademarked. If pronounced normally, “DELHIVERY” means “delivery,” which is a generic word that cannot be monopolized by anyone. In the United States as well, trademark laws prohibit the trademarking of generic terms because it would give someone a monopoly on a product.

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Brief background 

Booking.com is a website for booking travel and lodging services that has been using the domain name “Booking.com” since 2006.Company in 2011 submitted its four trademark applications to the US Patent and Trademark Office (USPTO) for the use of “BOOKING.COM” as a word trademark. USPTO initially rejected the application, stating that “BOOKING.COM” was generic and thus not protectable.According to§1052 (section 2)of the Lanham Act of 1946, for a trademark to be eligible for protection, it must be considered “distinctive”. Generic terms are not considered distinctive, but terms that have acquired secondary meaning, or a mental association in the minds of consumers between the proposed mark and the source of the product or service, can be protected.Booking.com appealed the refusal of registration they received from the Trademark Trial and Appeal Board (TTAB), which claimed that their name was generic and therefore unprotectable under U.S. trademark law. However, the District Court later ruled that the name was not generic because consumers understood it to signify a specific travel-reservation service, rather than a general group of travel-reservation services.It is widely understood that Booking.com is not a generic term but rather a description of the booking services offered on the domain. This was affirmed by the U.S. Court of Appeals for the Fourth Circuit. The PTO appealed the decision, and the United States Supreme Court granted certiorari.

Issues involved

1. Does adding “.com” to a generic term create a Trademark?
2. Can a generic.com term be protected under trademark law or is there a per se rule against it?
3. Would exclusivity to the term .com indirectly promote anti-competitive market practices?

Observation and decision 

In this judgment that was affirmed by the Hon’ble Supreme Court with an 8-1 majority, Justice Ruth Bader Ginsberg emphasized the findings of a survey report. The report stated that 74.8% of participants identified “Booking.com” as a brand name while 25% identified it as a generic term, providing evidence for the ruling.

Opinion of the Majority

• A term like “Booking.com” will only considered a generic name for a category of goods and services if it is perceived as such by consumers.Whether Booking.com is a generic term or not would be understood by the consumer’s perspective. The US Patent and Trademark Office (USPTO) based its contention on the case of Goodyear’s India Rubber Glove v. Goodyear Rubber Co. (128 U.S. 598, (1888)). The court ruled that simply adding terms like “Company” or “Inc.” to a generic or unprotectable term does not make it a protectable trademark. Additionally, the court recognized issues with relying on the precedent set by the Goodyear case. However, in present case the court says that “The Goodyear” case only applied to specific classes of goods produced through a particular process, and granting exclusive rights to those goods would infringe on the rights of others who deal in the same articles.Further, it has been stated that the classification of a term as generic or non-generic is dependent on how consumers perceive its meaning. If they perceive it as the name of a class rather than a term capable of distinguishing among members of the class, it is considered generic. In the case of Booking.com, the court ruled that they are entitled to the same benefits as other non-generic trademarks. The Lanham Act 1946 specifies the principle of the significance of a trademark, allowing names to be trademarked unless the combination of term and Top-level Domain (TLD) is considered generic to consumers and difficult to distinguish.
• The rejection of the rule Per se by the Hon’ble Court has expanded trademark protection to include generic domain names. The court noted that in the past, the USPTO had granted registration to other generic domains such as “Art.com” for art print services and “Dating.com” for dating services, even though the prerequisites were not met.
• The USPTO expressed concern regarding the possibility of anti-competitive behaviour in the marketplace due to monopoly situations can be created by this ruling and agreed with the contention that there is a likelihood of confusion among consumers. However, the court clarified that the protection granted was only for the specific “Booking.com” mark only,competitors are free to use the generic term “booking,” which will be protected through the “doctrine of fair use.”

Dissenting opinion 

 Justice Stephen Breyer was not convinced by the majority opinion and sided with USPTO by stating:

Inconsistent with trademark principles and sound trademark policy, the majority’s opinion granted a trademark to a generic term, creating a monopoly and posing serious anti-competitive consequences in the online marketplace. It is not appropriate to use a generic term as a trademark, as it could lead to a proliferation of generic.com and confuse consumers by associating a particular website with a source-identifying characteristic.

Author: Deepti, A student at Faculty of law, Delhi university, in case of any queries please contact/write back to us at support@ipandlegalfilings.com or IP & Legal Filing

References 

Statutes

• The Lanham Act 1946
• The Trademark Act 1999

Case laws

• Goodyear’s India Rubber Glove Mfg. Co. v. Rubber Co., 128S. 598 (1888)
• United States Patent and Trademark Office v. Booking.com B. V., No. 19-46, 591S. ___ (2020)

Articles/Readings

• College of Law Research Paper No. 2019-14
• (http://www.uspto.gov/web/offices/tac/notices/guide299.htm USPTO Examination Guide 2-99).
• https://www.oyez.org/cases/2019/19-46#:~:text=Justice%20Ruth%20Bader%20Ginsburg%20authored,eligible%20for%20federal%20trademark%20protection.
• https://www.mondaq.com/india/trademark/964078/us-supreme-court-grants-trademark-protection-to-bookingcom-for-booking-services
• https://blog.ipleaders.in/trademark-registration-extended-generic-com-marks/