The US Supreme Court made history on Monday, May 4, 2020, when, because of the COVID-19 pandemic, it heard arguments via telephone instead of inside the court's imposing building in Washington, DC. What's more, those arguments were live-streamed to anyone with an internet connection: another first.
But there were other reasons to pay attention that day. Not only were the justices hearing a trademark-law case — rare enough in the highest court of the land — but the case centered on a curious class of brand names: generics. It was, in fact, "the first occasion for the Court to opine on generic marks since it decided 'shredded wheat' was generic in 1938," as the Electronic Frontier Foundation, which had filed an amicus brief in the case, put it.
Why should this interest you and me? Because brand names, internet domain names, and trademarks are part of our everyday conversation. Understanding how they work, and how the law views them, can help us wield the language of commerce more accurately.
Here's a condensed version of what's at stake:
U.S. Patent and Trademark Office vs. Booking.com, the case argued on May 4, is the culmination of eight years of efforts by Booking.com, which calls itself "the world's #1 choice for booking hotel accommodations," to register its full name, including the .com, as a US trademark. (The company, which is headquartered in Amsterdam, has been online since 1996.) The trademark office (USPTO) denied the application on grounds that booking is a generic term for "hotel reservation services," and .com "merely communicates to consumers that the business offers online hotel reservations," as the independent legal website SCOTUSblog summarized. Booking.com successfully appealed that decision in federal district court, a divided appeals court affirmed the district court, and now the USPTO was mounting a final legal challenge.
Clear so far? Let's look more closely at the key words.
Trademark. A lot of confusion arises from the fact that the legal definition of trademark is not the same as the definition in popular dictionaries. In the US, the Lanham Act, also known as the Trademark Act of 1946, defined trademark as a word, phrase, or symbol that identifies the source of a product or service and distinguishes it from competitors. Legally, you don't have to register a name or symbol; you just have to use it in business. Most general-usage dictionaries, by contrast, stipulate that a trademark must be "legally reserved" (Merriam-Webster's definition)— a distinction signified by a little ® after a brand name.
Another difference: legally, trademark is never a verb. Trademark lawyers insist that to trademark has no clear meaning: Does it signify "to file for trademark registration," "to have trademark protection," or simply "to be in use as a brand name"? In everyday usage, those distinctions are overlooked. In fact, even the Supreme Court justices and the lawyers in the Booking.com case frequently used trademark as a verb, to the consternation of observers like law professor Sarah Burstein.
Generic. In trademark law, generic means the common or class name for a good or service. The Lanham Act stipulates that generic names — KAYAK for a kayak brand, HOUSECLEANING for a cleaning service — are ineligible for registration. That doesn't mean they can't be used in business; they just can't be enforced as trademarks and don't qualify for the little ®. What's more, a word that's generic in one context can be arbitrary — a different trademark category — in another. "CAMEL is generic for an animal but not for cigarettes," says Jessica Stone Levy, a trademark lawyer who practices in Colorado. "The CAMEL brand appearing on a pack of cigarettes identifies those cigarettes as coming from a particular source, which means it's protectable as a trademark." BOOKING may be generic for bookings, but it could be a protectable trademark for, say, children's clothing or wine. And KAYAK, of course, is a registered trademark for a travel-reservation service.
Generic has another meaning specific to the internet. A generic top-level domain, or gTLD, is usually considered to be one of the four original URL extensions: .com, .net., .org, or .info. (.com is an abbreviation not of "company," as is frequently assumed, but of "commercial." In recent years, new gTLDs have been sanctioned, including.jobs, .mobi, and .travel.) Thus, Booking.com represents two types of genericism: legal and internet.
By the way, some terms now regarded as generic — aspirin, cellophane, escalator, zipper, flip phone, and many others — were originally registered trademarks and were genericized when they became the common names for those products.
Booking. In 2012, the USPTO determined that booking was a generic term for "hotel reservations" and thus ineligible for trademark registration. But how generic is it ? In 2011, Ben Yagoda, who writes about language and tracks the encroachment of British expressions into US English, classified to book as a British import, whereas "reserve was much more common in reference to eating and sleeping." That's probably still true. Acceptance of booking in the US, Yagoda wrote, began around 1993, but it was still a bit exotic in 2013, when Booking.com started flooding the US airwaves with advertising that turned the company name into a sly adjective: "Look at the booking view!" "Bask in the booking glory!" (The UK's Advertising Council received more than 2,000 complaints about the ad being "offensive.";)
Booking.com is the industry leader, but it's far from the only reservations company with booking in its name. eBooking, CruiseBooking, BookingPal, and ResortBookings &mdash ;to name just four companies — all have obtained trademark protection for their respective names, which evidently struck the trademark examiners as just non-generic enough to qualify.
Domain. An internet domain is a unique name of an organization or person on the internet — emphasis on unique. Trademarks, by contrast, do not need to be unique; they simply need to be distinctive in their class of goods or services. There's only one dove.com — registered to the skincare brand owned by Unilever — but there are multiple registered trademarks for DOVE, including one for the chocolate-coated ice cream bars. Registering an internet domain does not confer legal protection in the same way a trademark registration does. (For more on the etymology of domain, see Peter Barrett's column about home words.)
The Supreme Court will announce its decision in Booking.com later in 2020. In the meantime, I'll let trademark lawyer Jessica Stone Levy pass her own judgment. "Booking.com has the grail — the domain that says exactly what they do, which is something marketers desperately desire, and which frustrates trademark lawyers everywhere," she told me. "Not being entitled to trademark registration is the price you pay for selecting a generic" — and instantly understood — "name for the goods or services you're selling."