Page 12 - Delaware Lawyer - Summer 2020

FEATURE
vented from using an identical domain name. They argued that the domain name owner should not be granted an additional competitive advantage con- ferred by a U.S. trademark registra- tion, when the owner already holds a substantial competitive advantage con- ferred by a generic.com domain name. See, e.g., Brief of Amicus Curiae Elec- tronic Frontier Foundation in Support of Petitioners, at 8-13.
However, as pointed out by Book- ing.com’s counsel, anti-competitive concerns could be addressed by basic principles of trademark law, which dic- tate that the more descriptive a mark is, the narrower its scope of protection becomes. In fact, when questioned by the justices, Booking.com agreed that the mark “BOOKING.COM”, as a de- scriptive mark, would be entitled to a narrow scope of protection, and other marks, such as “EBOOKING.COM”, should be able to co-exist peacefully in the marketplace with the “BOOKING. COM” mark.
During oral argument, the PTO also raised concerns that domain names will pass the “primary significance” test simply due to a unique feature of domain names, i.e., only one person or entity can own a particular domain name at a given time. Therefore, con- sumers will always associate a domain
name mark with a particular source. However, this concern could be ad- dressed by balancing the weight given to consumer surveys by the PTO or courts in such cases, compared to oth- er types of evidence, such as dictionary definitions, and references in books, newspapers, magazines and online re- sources. The latter types of evidence can be used in addition to survey evi- dence to determine whether a generic. com mark, as a whole, is generic or de- scriptive when applied to the particular goods or services listed in a trademark application. Thus, the “primary sig- nificance” test, not a bright-line rule, would seem to provide a workable so- lution for determining whether a par- ticular generic.com mark is entitled to registration at the PTO.
The Supreme Court’s Decision
In its opinion, the Supreme Court went one step further. The Court agreed with the Fourth Circuit Court of Appeals that “BOOKING.COM” is not generic and is eligible for regis- tration at the PTO. Justice Ginsberg, writing for an 8-1 majority, found that the test for determining whether a proposed generic.com trademark or service mark is generic and can never be protected as a source identifier for particular goods or services is whether
The Court agreed with the
Fourth Circuit Court of Appeals that “BOOKING.COM” is not generic and is eligible for registration at the PTO.
the term, when taken as a whole, signi- fies to consumers a class of goods or services. Booking.com, Slip Opinion at 7. The Court held that “[w]hether any given generic.com term is generic depends on whether consumers in fact perceive that term as the name of a class or, instead, as a term capable of distin- guishing among members of the class.” Id. at 11 (emphasis added).
The Court did not limit the test to the mark’s “primary significance” to consumers in 15 U.S.C. 1064(3), but rather applied an even broader test:
“The U. S. Patent and Trademark Office (PTO) suggests that the primary-significance test might not govern outside the context of §1064(3), which subjects to cancel- lation marks previously registered that have ‘become’ generic. To so confine the primary-significance test, however, would upset the un- derstanding, shared by Courts of Appeals and the PTO’s own manual for trademark examiners, that the same test governs whether a mark is registrable in the first place. (Cita- tions omitted.) We need not address today the scope of the primary-sig- nificance test’s application, for our analysis does not depend on wheth- er one meaning among several is ‘primary.’ Sufficient to resolve this
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