Fourth Circuit Upholds Finding That Is Not Generic

It is a truism that generic terms cannot be protected as trademarks. And usually when additional generic terms are added, the result is itself still generic.

But a recent Fourth Circuit ruling in * B.V. v. U.S. PTO (2019) upheld a district court finding that, taken as a whole, the mark BOOKING.COM for hotel reservation services was not* generic. Although each of the elements (BOOKING) and (.COM) by itself was generic, the mark, considered “as a whole” and given the survey evidence introduced, the district court found was not generic (rather it was found descriptive, and protectible with a showing of secondary meaning).

Counsel and parties dealing with trademarks should take into account that combinations of words, even generic words, might still be protectible, assuming that the public perceives the combination not as a generic term, but a descriptive one or a brand. This could favor parties seeking protection for such marks. Conversely, parties against whom such combination marks are asserted should take this into account when such marks are asserted against them., the well-known website, operates a service where customers can book travel and hotel accommodations. It has used the name BOOKING.COM since 2006.

In 2011 and 2012, filed four trademark applications for the use of BOOKING.COM as a word mark for hotel reservation services. The PTO denied the applications as generic. filed a de novo case in the Eastern District of Virginia, which held a trial and then reversed the PTO ruling. The Fourth Circuit affirmed.

The key issue was whether the proposed mark was generic or descriptive. Generic marks are the common name of a product or service; they can never be protected as a trademark. Descriptive marks describe the “function, use, characteristic, size, or intended purpose” of the product or service. They may be protected, but the trademark owner must show that it has achieved “secondary meaning,” i.e., when the public identifies the description as associated only with one source.

As presented on appeal, it was undisputed that BOOKING is generic for reservation services, and that .COM is also generic, signifying a company that trades or deals on-line. Nevertheless, the law requires that the mark be examined “as a whole” to determine if it is generic or descriptive. (The PTO conceded that, if descriptive, had shown secondary meaning.)

Whether the mark was generic as a whole was a question of fact, specifically what the relevant public (consumers who use hotel reservation services) understand the term to refer to – the act of booking a reservation, or a brand name. On that point, introduced powerful survey evidence that the district court credited.

The Fourth Circuit rejected a PTO argument that adding .com to a generic word can never render it non-generic, similar to old Supreme Court cases that held that the addition of generic terms (like COMPANY or STORE) cannot render a generic mark non-generic.

That might often be the case, but there is no per se rule one way or the other as to whether the resulting combination ( remains generic. That is to be tested as a factual matter.

Parties dealing with combination marks (whether seeking to protect them or accused of infringing them) should understand that there are no per se rules – the combination may (and often will be) generic, but it may not be. Factual evidence – including surveys – is often needed to test the issue.