“Booking.com”

A term styled “generic.com” is a generic name for a class of goods or services only if the term has that meaning to consumers. Whether “Booking.com” is generic turns on whether that term, taken as a whole, signifies to consumers the class of online hotel-reservation services. Thus, if “Booking.com” were generic, consumers would be expected to understand Travelocity – another such service – to be a “Booking.com.” Similarly, a consumer, searching for a trusted source of online hotel-reservation services, could ask a frequent traveller to name her favourite “Booking.com” provider. Consumers do not in fact perceive the term “Booking.com” that way. A “generic.com” term might also convey to consumers a source-identifying characteristic: an association with a particular website. Only one entity can occupy a particular Internet domain name at a time, so “[a] consumer who is familiar with that aspect of the domain-name system can infer that BOOKING.COM refers to some specific entity.” Thus, consumers could understand a given “generic.com” term to describe the corresponding website or to identify the website’s proprietor. Thus, it is not true that “generic.com” terms are capable of signifying only an entire class of online goods or services and, hence, are categorically incapable of identifying a source. Whether a term is generic depends on its meaning to consumers. That bedrock principle of the Lanham Act is incompatible with an unyielding legal rule that entirely disregards consumer perception. Instead, Goodyear [Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U.S. 598 (1888)] reflects a more modest principle harmonious with Congress’ subsequent enactment: A compound of generic elements is generic if the combination yields no additional meaning to consumers capable of distinguishing the goods or services. Finally, trademark protection for a term like “Booking.com” does not unduly hinder competitors as it does not exclude or inhibit competitors from using the term “booking”. In assessing the likelihood of confusion, courts consider the mark’s distinctiveness: “The weaker a mark, the fewer are the junior uses that will trigger a likelihood of consumer confusion.” When a mark incorporates generic or highly descriptive components, consumers are less likely to think that other uses of the common element emanate from the mark’s owner. And even where some consumer confusion exists, the doctrine known as classic fair use, protects from liability anyone who uses a descriptive term, “fairly and in good faith” and “otherwise than as a mark,” merely to describe her own goods. 15 U.S.C. §1115(b)(4); see KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 15 122–123 (2004).