SWIPLit

By Andy Halaby

The Supreme Court’s decision in United States Patent & Trademark Office v. Booking.com to take up whether booking.com is generic, and thus unprotectable as a trademark, is intriguing.

The government maintains the term is generic.  It starts with the premise that the root term “booking” is generic.  As for “.com,” the government likens it to “Company,” and invokes the Supreme Court’s 1888 decision in Goodyear’s Rubber Mfg. Co. v. Goodyear Rubber Co. where the Court observed,

The addition of the word ‘Company’ only indicates that parties have formed an association or partnership to deal in such goods, either to produce or to sell them. Thus parties united to produce or sell wine, or to raise cotton or grain, might style themselves ‘Wine Company,’ ‘Cotton Company,’ or ‘Grain Company,’ but by such description they would in no respect impair the equal right of others engaged in similar business to use similar designations, for the obvious reason that all persons have a right to deal in such articles, and to publish the fact to the world.

(The term “Goodyear rubber” in that case meant, generically, a type of rubber.)

The company maintains, among other things, that “booking.com” is well-known to refer to it in particular, and that 15 U.S.C. § 1064(3) makes the would-be mark’s “primary significance” the test of genericism.  The company has devoted extraordinary resources to garnering public association of that term with the company and its services (“Booking.com, booking.yeah!”).  The question is whether having done so enables the term to evade classification as generic.

The Court has emphasized textualism in many of its recent cases.  Here, the statute provides,

The primary significance of the registered mark to the relevant public rather than purchaser motivation shall be the test for determining whether the registered mark has become the generic name of goods or services on or in connection with which it has been used.

Since “primary significance” is cast explicitly in relation to “purchaser motivation,” one must ask, as a purely textual matter, how much import to attribute to the statutory term “primary significance,” standing alone.

As it turns out, Congress added the “primary significance” language in 1984, in response to an aberrant judicial decision, Anti-Monopoly, Inc. v. General Mills Fun Group, 611 F.2d 296 (9th Cir. 1979).  The legislative history makes clear that the language was intended not to “create new law or establish new standards, but rather [to] reaffirm[] and clarif[y] the established principles of trademark law” that existed before.  S. Rep. 98-627 (1984).

And, as it turns out, the statutory language traces back to a 1938 Supreme Court decision, Kellogg Co. v. National Biscuit Co.  There, the Court held that

to establish a trade name in the term ‘shredded wheat’ [Nabisco] must show more than a subordinate meaning which applies to it. It must show that the primary significance of the term in the minds of the consuming public is not the product but the producer.

The Court made this statement in the context of expired patent protection, during which “‘Shredded Wheat’ was the general designation of the patented product . . . the name by which it had become known.”  Similarly, what the legislative history characterizes as the “classic test for whether a trademark has become generic” — “What do buyers understand by the word for whose use the parties are contending?” — comes from a 1921 district court decision, Bayer v. United Drug, over whether “aspirin,” which once had been patented, had become a generic term.  Even the generic term “Goodyear rubber,” apparently, derived from processes patented by Charles Goodyear.

In the wake of, say, a “shredded wheat” patent’s expiration, it may make some sense to focus on whether consumers primarily understand that term as meaning its (formerly exclusive) source, as opposed to the product itself.  That context would seem different from taking a common word and, whether or not coupled with “.com,” using expansive advertising to influence public perception of its meaning.

In any event, the Supreme Court would seem relatively free to decide, based on its own view of its own precedents and unaltered by Congress’s reference to “primary significance” in the statute, whether “booking.com” is generic.