UNITEDST ATESP ATENT AND TRADEMARK OFFICEETAL Versus BOOKING.COM B. V.
Summary: (a) Trademark- -Trademark protection-Generic terms-Internet domain name (Booking.com) containing a combination of generic terms-Prohibition on generic terms as trademarks-Scope-Distinctiveness requirement for registration of trademark-Question as to whether the addition by an online business of a generic domain (".com") to an otherwise generic term ("Booking") created a protectable trademark, notwithstanding the Lanham Act's (also known as the Trademark Act of 1946) prohibition on generic terms as trademarks. Booking.com operated a website on which customers could make travel and lodging reservations and had used the name BOOKING.COM since at least 2006. In 2011 and 2012, Booking.com filed with the U.S. Patent and Trademark Office (USPTO) four trademark applications for the use of BOOKING.COM as a word mark and for stylized versions of the mark. Under the Lanham Act(also known as the Trademark Act of 1946), marks must be"distinctive"to be eligible for protection, and generic terms were not distinctive. The USPTO examiner rejected Booking.com's applications, finding that the marks were not protectable because BOOKING.COM was generic as applied to the services for which it sought registration (online hotel reservation services, among others). The Lanham Act also allowed protection for"descriptive"terms that had acquired secondary meaning, or a mental association in the minds of consumers between the proposed mark and the source of the product or service. In the alternative, the USPTO concluded that the marks were merely descriptive and that Booking.com had failed to establish that they had acquired secondary meaning as required for trademark protection. Booking.com appealed to the Trademark Trial and Appeal Board, which affirmed the rejection of Booking.com's applications. The Board found that BOOKING.COM was a generic term for these types of services and therefore ineligible for trademark protection. Because"booking"generically referred to"a reservation or arrangement to buy a travel ticket or stay in a hotel room"and".com"indicates a commercial website, the Board reasoned that consumers would understand the resulting term"BOOKING.COM"to refer to an online reservation service for travel-the very services proposed in Booking.com's applications. The district court reversed, ruling Booking.com had acquired secondary meaning. A panel of the U.S. Court of Appeals (for the Fourth Circuit) affirmed the district court's reversal finding no error in the District Court's assessment of how consumers perceived the term"Booking.com."The Appellate court also rejected the USPTO's contention that, as a rule, combining a generic term like"booking"with".com"yielded a generic composite. Question to be answered in the present case was whether the addition by an online business of a generic domain (".com") to an otherwise generic term ("Booking") created a protectable trademark, notwithstanding the Lanham Act's prohibition on generic terms as trademarks. Per Ginsburg, J (Majority opinion): A term styled"generic(dot)com"was a generic name for a class of goods or services-and thus ineligible for federal trademark protection-only if the term had that meaning to consumers. Since the lower court determined that consumers did not perceive the term"BOOKING.COM"to signify online hotel-reservation services as a class, it was not a generic term and thus was eligible for federal trademark protection. A generic name was ineligible for federal trademark registration. The parties in the present case did not dispute that the word"booking"was generic for hotel-reservation services. The USPTO, however, argued that the per se rule was that combination of a generic word and".com"was also generic. Such rule proffered by the USPTO was not supported by the itsown past practice or by trademark law or policy. Restatement (Third) of Unfair Competition 15, p. 142 (1993) and Otokoyama Co. v. Wine of Japan Import, Inc., 175 F. 3d 266, 270 (CA2 1999) ref. The USPTO maintained that the judgment Goodyear's India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U. S. 598, established that adding a generic corporate designation like"Company"to a generic term did not confer trademark eligibility, and that adding".com"to a generic term-like adding"Company"-could convey no source-identifying meaning. Such premise was faulty as adding".com"to a company name was different from adding"Company"in that only one company could occupy a particular internet domain name at a time, so even a"generic(dot)com"term could convey to consumers an association with a particular website. Moreover, a strict legal rule that entirely disregarded consumer perception was incompatible with a bedrock principle of the Lanham Act. The generic (or non-generic) character of a particular term depended on its meaning to consumers, i.e., did consumers in fact perceive the term as the name of a class or, instead, as a term capable of distinguishing among members of the class. The USPTO also argued that Booking.com had seized a domain name that no other website could use and was easy for consumers to find; and that consumers might enter the word 'booking' in a search engine or proceed directly to 'booking.com' in the expectation that online hotel-booking services would be offered at that address. Such competitive advantages, however, did not inevitably disqualify a mark from federal registration. All descriptive marks were intuitively linked to the product or service and thus might be easy for consumers to find using a search engine or telephone directory. The Lanham Act permitted registration nonetheless. Per Sotomayor, J (concurring): The question before the Court in the present case was whether there was a nearly per se rule against trademark protection for a"generic.com"term. There was no such rule, and such finding accorded with how the USPTO had treated such terms in the past. Sources such as dictionaries, usage by consumers and competitors, and any other source of evidence bearing on how consumers perceived a term's meaning may also inform whether a mark was generic or descriptive. Consumer-survey evidence may be an unreliable indicator of genericness of a term and in the present case the USPTO might well have been correct in its assessment, but that question was not before the Court in the present case. Instead, the Supreme Court considered only the validity of the per se rule adopted by USPTO against trademark protection for a"generic.com"term. Per Breyer, J. dissenting (Minority view): A generic term was not eligible for use as a trademark. Said principle applied even if a particular generic term had become identified with a first user in the minds of the consuming public. CES Publishing Corp. v. St. Regis Publications, Inc., 531 F. 2d 11, 13 (CA2 1975) ref. Trademark law did not protect generic terms, meaning terms that did no more than name the product or service itself. This principle preserved the linguistic commons by preventing one producer from appropriating to its own exclusive use a term needed by others to describe their goods or services. Trademark law protected those distinctive marks - words, names, symbols, and the like that distinguished a particular artisan's goods from those of others. Matal v. Tam, 582 U. S. ___, ___ (2017) (slip op., at 2) (quoting B&B Hardware, Inc. v. Hargis Industries, Inc., 575 U. S. 138, 142 (2015)) ref. A descriptive term could be registered as a trademark only if it acquired secondary meaning i.e., the public had come to associate it with a particular firm or its product. Two Pesos, Inc. v. Taco Cabana, Inc., 505 U. S. 769 (1992) ref. It was not always easy to distinguish generic from descriptive terms. It was particularly difficult to do so when a firm wished to string together two or more generic terms to create a compound term. Despite the generic nature of its component parts, the term as a whole was not necessarily generic. In such cases, courts must determine whether the combination of generic terms conveyed some distinctive, source-identifying meaning that each term, individually, lacked. If the meaning of the whole was no greater than the sum of its parts, then the compound was itself generic. The principle from the judgment in Goodyear's India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U. S. 598, recognized that designations such as"Company," "Corp.,"and"Inc."merely indicated corporate form and therefore did nothing to distinguish one firm's goods or services from all others. The addition of such a corporate designation did not magically transform a generic name for a product or service into a trademark, thereby giving a right to exclude others. In other words, where a compound term consisted simply of a generic term plus a corporate designation, the whole was necessarily no greater than the sum of its parts. 2 J. McCarthy, Trademarks and Unfair Competition 12:39 (5th ed. June 2020 update) and Princeton Vanguard, LLC v. Frito-Lay North Am., Inc., 786 F. 3d 960, 966-967 (CA Fed. 2015); In re Gould Paper Corp., 834 F. 2d 1017, 1018 (CA Fed. 1987) ref. In the present case the respondent sought to register a term,"Booking.com,"that consisted of a generic term,"booking"(known as the second-level domain) plus".com"(known as the top-level domain). The question at issue here was whether a term that took the form"generic.com"was generic in the ordinary course. When a website used an inherently distinctive second-level domain, it was obvious that adding".com"merely denoted a website associated with that term. Appending".com"to a generic term ordinarily yielded no meaning beyond that of its constituent parts. Because the term"Booking.com"was just such an ordinary"generic.com"term, it was not eligible for trademark registration. A top-level domain such as".com"had no capacity to identify and distinguish the source of goods or services. Combination of"booking"and".com"did not serve to identify a particular characteristic or quality of some thing; it connoted the basic nature of that thing - the hallmark of a generic term. Blinded Veterans Assn. v. Blinded Am. Veterans Foundation, 872 F. 2d 1035, 1042-1048 (CADC 1989) ref. The meaning conveyed by"Booking.com"was no more and no less than a website associated with its generic second-level domain,"booking."This would ordinarily be true of any generic term plus".com"combination. The term as a whole was just as generic as its constituent parts. As to the question of what stood in the way of automatic trademark eligibility for every"generic.com"domain, much of the time, that determination would turn primarily on survey evidence, just as it did in the present case. However, survey evidence had limited probative value in this context. Consumer surveys often tested whether consumers associated a term with a single source. But it was possible for a generic term to achieve such an association-either because that producer had enjoyed a period of exclusivity in the marketplace, or because it had invested money and effort in securing the public's identification. Evidence of such an association, no matter how strong, did not negate the generic nature of the term. For that reason, survey evidence was generally of little value in separating generic from descriptive terms. The approach adopted by the majority opinion in the present case was that a"generic.com"mark's eligibility for trademark protection turned primarily on survey data, however such data may be an unreliable indicator of genericness. Schwan's IP, LLC v. Kraft Pizza Co., 460 F. 3d 971, 975-976 (CA8 2006); Hunt Masters, Inc. v. Landry's Seafood Restaurant, Inc., 240 F. 3d 251, 254-255 (CA4 2001); A. J. Canfield Co. v. Honickman, 808 F. 2d 291, 301-303 (CA3 1986); Miller Brewing Co. v. Jos. Schlitz Brewing Co., 605 F. 2d 990, 995 (CA7 1979) and In re Hikari Sales USA, Inc., 2019 WL 1453259, *13 (TTAB 2019) ref. Granting trademark protection to"generic.com"marks also threatened serious anticompetitive consequences in the online marketplace. The owners of short, generic domain names enjoyed all the advantages of doing business under a generic name. These advantages existed irrespective of the trademark laws. Firstly, generic names were easy to remember. Because they immediately conveyed the nature of the business, the owner needed to expend less effort and expense educating consumers. Secondly, a generic business name may create the impression that it was the most authoritative and trustworthy source of the particular good or service. Thirdly, generic domains were also easier for consumers to find on the internet. Such advantages made it harder for distinctively named businesses to compete. Under the reasoning given in the majority opinion of present case, many businesses could obtain a trademark by adding".com"to the generic name of their product (e.g., pizza.com, flowers.com, and so forth). As the internet grows larger, as more and more firms use it to sell their products, the risk of anticompetitive consequences grew. Those consequences could nudge the economy in an anticompetitive direction. At the extreme, that direction pointed towards one firm per product, the opposite of the competitive multi firm marketplace that the basic economic laws sought to achieve. A term that took the form"generic.com"was not eligible for federal trademark registration, at least not ordinarily. There being no special circumstance in the present case,"Booking.com"was a generic term not eligible for federal registration as a trademark. Per Ginsburg, J (Majority view): (b) Trademark- -Trademark protection-Scope and concept-Trademark distinguished one producer's goods or services from another's-Guarding a trademark against use by others, secured to the owner of the mark the goodwill of his/her business and protected the ability of consumers to distinguish among competing producers-Trademark statutes aimed to protect the public so it may be confident that, in purchasing a product bearing a particular trademark which it favorably knew, it would get the product which it asked for and wanted to get-Trademark protection had roots in common law and equity. Park 'N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U. S. 189, 198 (1985); see S. Rep. No. 1333, 79th Cong., 2d Sess., 3 (1946) and Matal v. Tam, 582 U. S. ___, ___ (2017) (slip op., at 2) ref. (c) Trademark- -Trademark protection-Generic terms-Compound terms-Guiding principles stated. Following are guiding principles concerning trademark protection for generic and compound terms: (i) A 'generic' term named a"class" of goods or services, rather than any particular feature or exemplification of the class; (ii) For a compound term, the distinctiveness inquiry trained on the term's meaning as a whole, not its parts in isolation; (iii) The relevant meaning of a term was its meaning to consumers; (iv) Eligibility for registration turned on the mark's capacity to distinguish goods in commerce; (v) The primary significance of the registered mark to the relevant public shall be the test for determining whether the registered mark had become the generic name of goods or services; (vi) A compound of generic elements was generic if the combination yielded no additional meaning to consumers capable of distinguishing the goods or services; (vii) A competitor's use did not infringe a mark unless it was likely to confuse consumers; (viii) When a mark incorporated generic or highly descriptive components, consumers were less likely to think that other uses of the common element emanated from the mark's owner; and (ix) Even where some consumer confusion existed, the doctrine known as classic fair use, protected from liability anyone who used a descriptive term, fairly and in good faith and otherwise than as a mark, merely to describe his/her own goods. [pp. 1648, 1649, 1651, 1653] H, I, J, K, L, T, V, W & X Park 'N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U. S. 189, 198 (1985); see S. Rep. No. 1333, 79th Cong., 2d Sess., 3 (1946); Estate of P. D. Beckwith, Inc. v. Commissioner of Patents, 252 U. S. 538, 545-546 (1920); Bayer Co. v. United Drug Co., 272 F. 505, 509 (SDNY 1921) and KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U. S. 111, 122-123 (2004) ref.
ABDULLAH UMAR Versus State
Summary: (a) Anti-Terrorism Act (XXVII of 1997)- -Ss. 11-F(2), 11-F(5) & 11-F(6)-Membership, support and meetings relating to a proscribed organization, collection of money for proscribed organization-Appreciation of evidence-Prosecution case was that accused was working for proscribed organization and collecting chanda/donation for the said organization-Accused pleaded guilty and confessed his guilt-Record revealed that accused was intimated about the charge and its consequences and show cause notice was also given to him under S.243, Cr.P.C. but accused remained consistent with his statement-Trial Court after fulfilling codal formalities recorded his confessional statement-Once a person, involved in a criminal case, wanted to plead guilty to the charge levelled against him and placed himself at the mercy of the court, he became a friend of the court and the court always took lenient view in respect of his sentence-Trial Court had rightly taken a lenient view in respect of the sentences recorded against the accused, which were neither illegal nor contrary to the punishments provided under the relevant law-Even otherwise, by virtue of the provisions of S.412, Cr.P.C. accused, who pleaded guilty to the charge, had no right of appeal against his conviction but he could maintain an appeal only to the extent of the legality of the sentence passed against him by the Trial Court-Appeal against conviction was dismissed accordingly. (b) Anti-Terrorism Act (XXVII of 1997)- -Ss. 11-F(2), 11-F(5), 11-F(6)& 25-Limitation Act (IX of 1908), S. 5-Membership, support and meetings relating to a proscribed organization, collection of money for proscribed organization-Appeal-Condonation of delay-Scope-Appeal was time barred by five months and seven days as it was required to be filed within a period of fifteen days from the date of impugned order as per S.25 of the Anti-Terrorism Act, 1997-Said Act was a special statute and it overrode the general law-Accused had also filed an application under S.5 of the Limitation Act, 1908, for condoning the delay-Section 5 of Limitation Act, 1908, would be applicable subject to provision 29 of the Anti-Terrorism Act, 1997 which provided that if time was provided under any statute for filing appeals etc, which was different from the time mentioned in the Schedule attached to the Limitation Act, 1908, then S.5 of Limitation Act, 1908 would not be applicable unless it was made applicable by the statute under which the appeal was filed-No provision in the Anti-Terrorism Act, 1997 authorized the court to invoke the provisions of S.5 of the Limitation Act, 1908-Time provided under the Anti-Terrorism Act, 1997 for filing the appeal was different from the time provided in the Schedule attached to the Limitation Act, 1908, for filing such appeal-Section 5, Limitation Act, 1908 would not be applicable in the present case, hence the delay could not be condoned by invoking S.5 of the Limitation Act, 1908-Appeal against conviction was dismissed accordingly.