United States Patent and Trademark Office, et al. v. Booking.com B.V.
An Analysis Group academic affiliate filed an amicus brief in a US Supreme Court case testing whether a “generic.com” domain name could be trademarked. When the travel website Booking.com had applied for such a trademark for its domain name, the US Patent and Trademark Office (USPTO) denied the application on the ground that, as a per se rule, the combination of a generic term (like “booking”) and an internet domain identifier (like “.com”) results in another generic term, which is ineligible for federal trademark protection. Booking.com challenged the USPTO’s denial in federal court, and the case was appealed to the US Supreme Court. The oral argument was the first to be heard by the court by phone during the coronavirus pandemic.
With additional support from an Analysis Group team led by Vice President Mike Schreck, Professor Peter Golder filed an amicus brief on behalf of himself and other marketing academics opposing the USPTO’s per se rule. Professor Golder argued that the adoption of the rule would preclude courts from evaluating empirical evidence that can be probative in assessing genericness, such as usage of a term by consumers and competitors. He noted that such evidence – which can be garnered from surveys, media reports, social media sites, and online reviews, among other sources – can be compiled through reliable methods and used to evaluate consumer perception.
The Supreme Court rejected the USPTO’s per se rule. In her final authored majority opinion, the late Justice Ruth Bader Ginsburg wrote for the court that a “generic.com” construction has a generic meaning only if the term is seen that way by consumers. In a footnote, Justice Ginsburg noted that evidence bearing on the inquiry into genericness “can include not only consumer surveys, but also … usage by consumers and competitors, and any other source of evidence bearing on how consumers perceive a term’s meaning.”