Patent and Trademark Office v. Booking.com. B.V.

NOTICE: This opinion is subject to
formal revision before publication in the preliminary print of the
United States Reports. Readers are requested to notify the Reporter
of Decisions, Supreme Court of the United States, Washington,
D. C. 20543, of any typographical or other formal errors, in
order that corrections may be made before the preliminary print
goes to press.

															SUPREME COURT OF THE UNITED STATES

															_________________

															No. 19–46

															_________________

															UNITED STATES PATENT AND TRADEMARK OFFICE, et
al., PETITIONERS v. BOOKING.COM B. V.

															on writ of certiorari to the united states
court of appeals for the fourth circuit

															[June 30, 2020]

															Justice Ginsburg delivered the opinion of the
Court.

															This case concerns eligibility for federal
trademark registration. Respondent Booking.com, an enterprise that
maintains a travel-reservation website by the same name, sought to
register the mark “Booking.com.” Concluding that “Booking.com” is a
generic name for online hotel-reservation services, the U. S.
Patent and Trademark Office (PTO) refused registration.

															A generic name—the name of a class of products
or services—is ineligible for federal trademark registration. The
word “booking,” the parties do not dispute, is generic for
hotel-reservation services. “Booking.com” must also be generic, the
PTO maintains, under an encompassing rule the PTO currently urges
us to adopt: The combination of a generic word and “.com” is
generic.

															In accord with the first- and second-instance
judgments in this case, we reject the PTO’s sweeping rule. 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. Consumers,
according to lower court determinations uncontested here by the
PTO, do not perceive the term “Booking.com” to signify online
hotel-reservation services as a class. In circumstances like those
this case presents, a “generic.com” term is not generic and can be
eligible for federal trademark registration.

															I

															A

															A trademark distinguishes one producer’s goods
or services from another’s. Guarding a trademark against use by
others, this Court has explained, “secure[s] to the owner of the
mark the goodwill” of her business and “protect[s] the ability of
consumers to distinguish among competing producers.” 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) (trademark statutes aim to “protect the public so
it may be confident that, in purchasing a product bearing a
particular trade-mark which it favorably knows, it will get the
product which it asks for and wants to get”). Trademark protection
has roots in common law and equity. Matal v. Tam , 582
U. S. ___, ___ (2017) (slip op., at 2). Today, the Lanham Act,
enacted in 1946, provides federal statutory protection for
trademarks. 60Stat. 427, as amended, 15 U. S. C. §1051 et seq. We have recognized that federal trademark
protection, supplementing state law, “supports the free flow of
commerce” and “foster[s] competition.” Matal , 582
U. S., at ___, ___–___ (slip op., at 3, 4–5) (internal
quotation marks omitted).

															The Lanham Act not only arms trademark owners
with federal claims for relief; importantly, it establishes a
system of federal trademark registration. The owner of a mark on
the principal register enjoys “valuable benefits,” including a
presumption that the mark is valid. Iancu v. Brunetti , 588 U. S. ___, ___ (2019) (slip op., at 2);
see §§1051, 1052. The supplemental register contains other product
and service designations, some of which could one day gain
eligibility for the principal register. See §1091. The supplemental
register accords more modest benefits; notably, a listing on that
register announces one’s use of the designation to others
considering a similar mark. See 3 J. McCarthy, Trademarks and
Unfair Competition §19:37 (5th ed. 2019) (hereinafter McCarthy).
Even without federal registration, a mark may be eligible for
protection against infringement under both the Lanham Act and other
sources of law. See Matal , 582 U. S., at ___–___ (slip
op., at 4–5).

															Prime among the conditions for registration,
the mark must be one “by which the goods of the applicant may be
distinguished from the goods of others.” §1052; see §1091(a)
(supplemental register contains “marks capable of distinguishing
. . . goods or services”). Distinctiveness is often
expressed on an increasing scale: Word marks “may be (1) generic;
(2) descriptive; (3) suggestive; (4) arbitrary; or (5) fanciful.” Two Pesos , Inc. v. Taco Cabana , Inc. , 505 U.S.
763 , 768 (1992).

															The more distinctive the mark, the more readily
it qualifies for the principal register. The most distinctive
marks—those that are “ ‘arbitrary’ (‘Camel’ cigarettes),
‘fanciful’ (‘Kodak’ film), or ‘suggestive’ (‘Tide’ laundry
detergent)”—may be placed on the principal register because they
are “inherently distinctive.” Wal-Mart Stores , Inc. v. Samara Brothers , Inc. , 529
U.S. 205 , 210–211 (2000). “Descriptive” terms, in contrast, are
not eligible for the principal register based on their inherent
qualities alone. E.g. , Park ’N Fly , Inc. v. Dollar Park & Fly , Inc. , 718 F.2d 327, 331 (CA9
1983) (“Park ’N Fly” airport parking is descriptive), rev’d on
other grounds, 469 U.S.
189 (1985). The Lanham Act, “liberaliz[ing] the common law,”
“extended protection to descriptive marks.” Qualitex Co. v. Jacobson Products Co. , 514 U.S.
159 , 171 (1995). But to be placed on the principal register,
descriptive terms must achieve significance “in the minds of the
public” as identifying the applicant’s goods or services—a quality
called “acquired distinctiveness” or “secondary meaning.” Wal-Mart Stores , 529 U. S., at 211 (internal quotation
marks omitted); see §1052(e), (f ). Without secondary meaning,
descriptive terms may be eligible only for the supplemental
register. §1091(a).

															At the lowest end of the distinctiveness scale
is “the generic name for the goods or services.” §§1127, 1064(3),
1065(4). The name of the good itself ( e.g. , “wine”) is
incapable of “distinguish[ing] [one producer’s goods] from the
goods of others” and is therefore ineligible for registration.
§1052; see §1091(a). Indeed, generic terms are ordinarily
ineligible for protection as trademarks at all. See Restatement
(Third) of Unfair Competition §15, p. 142 (1993); Otokoyama
Co. v. Wine of Japan Import , Inc. , 175 F.3d 266 , 270 (CA2 1999) (“[E]veryone may use [generic
terms] to refer to the goods they designate.”).

															B

															Booking.com is a digital travel company that
provides hotel reservations and other services under the brand
“Booking.com,” which is also the domain name of its
website.[ 1 ] Booking.com filed
applications to register four marks in connection with
travel-related services, each with different visual features but
all containing the term “Booking.com.”[ 2 ]

															Both a PTO examining attorney and the PTO’s
Trademark Trial and Appeal Board concluded that the term
“Booking.com” is generic for the services at issue and is therefore
unregistrable. “Booking,” the Board observed, means making travel
reservations, and “.com” signifies a

															commercial website. The Board then ruled that
“customers would understand the term BOOKING.COM primarily to refer
to an online reservation service for travel, tours, and lodgings.”
App. to Pet. for Cert. 164a, 176a. Alternatively, the Board held
that even if “Booking.com” is descriptive, not generic, it is
unregistrable because it lacks secondary meaning.

															Booking.com sought review in the U. S.
District Court for the Eastern District of Virginia, invoking a
mode of review that allows Booking.com to introduce evidence not
presented to the agency. See §1071(b). Relying in significant part
on Booking.com’s new evidence of consumer perception, the District
Court concluded that “Booking.com”—unlike “booking”—is not generic.
The “consuming public,” the court found, “primarily understands
that BOOKING.COM does not refer to a genus, rather it is
descriptive of services involving ‘booking’ available at that
domain name.” Booking.com B.V. v. Matal , 278
F. Supp. 3d 891, 918 (2017). Having determined that
“Booking.com” is descriptive, the District Court additionally found
that the term has acquired secondary meaning as to
hotel-reservation services. For those services, the District Court
therefore concluded, Booking.com’s marks meet the distinctiveness
requirement for registration.

															The PTO appealed only the District Court’s
determination that “Booking.com” is not generic. Finding no error
in the District Court’s assessment of how consumers perceive the
term “Booking.com,” the Court of Appeals for the Fourth Circuit
affirmed the court of first instance’s judgment. In so ruling, the
appeals court rejected the PTO’s contention that the combination of
“.com” with a generic term like “booking” “is necessarily generic.” 915 F.3d 171, 184 (2019). Dissenting in relevant part,
Judge Wynn concluded that the District Court mistakenly presumed
that “generic.com” terms are usually descriptive, not generic.

															We granted certiorari, 589 U. S. ___
(2019), and now affirm the Fourth Circuit’s decision.

															II

															Although the parties here disagree about the
circumstances in which terms like “Booking.com” rank as generic,
several guiding principles are common ground. First, a “generic”
term names a “class” of goods or services, rather than any
particular feature or exemplification of the class. Brief for
Petitioners 4; Brief for Respondent 6; see §§1127, 1064(3), 1065(4)
(referring to “the generic name for the goods or services”); Park ’N Fly , 469 U. S., at 194 (“A generic term is one
that refers to the genus of which the particular product is a
species.”). Second, for a compound term, the distinctiveness
inquiry trains on the term’s meaning as a whole, not its parts in
isolation. Reply Brief 9; Brief for Respondent 2; see Estate of
P. D. Beckwith , Inc. v. Commissioner of
Patents , 252 U.S.
538 , 545–546 (1920). Third, the relevant meaning of a term is
its meaning to consumers. Brief for Petitioners 43–44; Brief for
Respondent 2; see Bayer Co. v. United Drug Co. , 272
F. 505, 509 (SDNY 1921) (Hand, J.) (“What do the buyers understand
by the word for whose use the parties are contending?”).
Eligibility for registration, all agree, turns on the mark’s
capacity to “distinguis[h]” goods “in commerce.” §1052. Evidencing
the Lanham Act’s focus on consumer perception, the section
governing cancellation of registration provides that “[t]he primary
significance of the registered mark to the relevant public
. . . shall be the test for determining whether the
registered mark has become the generic name of goods or services.”
§1064(3).[ 3 ]

															Under these principles, 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, we might expect consumers to
understand Travelocity—another such service—to be a “Booking.com.”
We might similarly expect that a consumer, searching for a trusted
source of online hotel-reservation services, could ask a frequent
traveler to name her favorite “Booking.com” provider.

															Consumers do not in fact perceive the term
“Booking.com” that way, the courts below determined. The PTO no
longer disputes that determination. See Pet. for Cert. I; Brief for
Petitioners 17–18 (contending only that a consumer-perception
inquiry was unnecessary, not that the lower courts’
consumer-perception determination was wrong). That should resolve
this case: Because “Booking.com” is not a generic name to
consumers, it is not generic.

															III

															Opposing that conclusion, the PTO urges a
nearly per se rule that would render “Booking.com”
ineligible for registration regardless of specific evidence of
consumer perception. In the PTO’s view, which the dissent embraces,
when a generic term is combined with a generic top-level domain
like “.com,” the resulting combination is generic. In other words,
every “generic.com” term is generic according to the PTO, absent
exceptional circumstances.[ 4 ]

															The PTO’s own past practice appears to reflect
no such comprehensive rule. See, e.g. , Trademark
Registration No. 3,601,346 (“ART.COM” on principal register for, inter alia , “[o]nline retail store services” offering “art
prints, original art, [and] art reproductions”); Trademark
Registration No. 2,580,467 (“DATING.COM” on supplemental register
for “dating services”). Existing registrations inconsistent with
the rule the PTO now advances would be at risk of cancellation if
the PTO’s current view were to prevail. See §1064(3). We decline to
adopt a rule essentially excluding registration of “generic.com”
marks. As explained below, we discern no support for the PTO’s
current view in trademark law or policy.

															A

															The PTO urges that the exclusionary rule it
advocates follows from a common-law principle, applied in Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber
Co. , 128 U.S.
598 (1888), that a generic corporate designation added to a
generic term does not confer trademark eligibility. In Goodyear , a decision predating the Lanham Act, this Court
held that “Goodyear Rubber Company” was not “capable of exclusive
appropriation.” Id. , at 602. Standing alone, the term
“Goodyear Rubber” could not serve as a trademark because it
referred, in those days, to “well-known classes of goods produced
by the process known as Goodyear’s invention.” Ibid. “[A]ddition of the word ‘Company’ ” supplied no protectable
meaning, the Court concluded, because adding “Company” “only
indicates that parties have formed an association or partnership to
deal in such goods.” Ibid. Permitting exclusive rights in
“Goodyear Rubber Company” (or “Wine Company, Cotton Company, or
Grain Company”), the Court explained, would tread on the right of
all persons “to deal in such articles, and to publish the fact to
the world.” Id. , at 602–603.

															“Generic.com,” the PTO maintains, is like
“Generic Company” and is therefore ineligible for trademark
protection, let alone federal registration. According to the PTO,
adding “.com” to a generic term—like adding “Company”—“conveys no
additional meaning that would distinguish [one provider’s] services
from those of other providers.” Brief for Petitioners 44. The
dissent endorses that proposition: “Generic.com” conveys that the
generic good or service is offered online “and nothing more.” Post , at 1.

															That premise is faulty. A “generic.com” term
might also convey to consumers a source-identifying characteristic:
an association with a particular website. As the PTO and the
dissent elsewhere acknowledge, 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.” Brief for
Petitioners 40. See also Tr. of Oral Arg. 5 (“Because domain names
are one of a kind, a significant portion of the public will always
understand a generic ‘.com’ term to refer to a specific business
. . . .”); post , at 7 (the “exclusivity” of
“generic.com” terms sets them apart from terms like “Wine, Inc.”
and “The Wine Company”). Thus, consumers could understand a given
“generic.com” term to describe the corresponding website or to
identify the website’s proprietor. We therefore resist the PTO’s
position 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.[ 5 ]

															The PTO’s reliance on Goodyear is flawed
in another respect. The PTO understands Goodyear to hold
that “Generic Company” terms “are ineligible for trademark
protection as a matter of law ”—regardless of how “consumers
would understand” the term. Brief for Petitioners 38. But, as
noted, whether a term is generic depends on its meaning to
consumers. Supra , at 6. That bedrock principle of the Lanham
Act is incompatible with an unyielding legal rule that entirely
disregards consumer perception. Instead, Goodyear 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.

															The PTO also invokes the oft-repeated principle
that “no matter how much money and effort the user of a generic
term has poured into promoting the sale of its merchandise
. . . , it cannot deprive competing manufacturers of the
product of the right to call an article by its name.” Abercrombie & Fitch Co. v. Hunting World , Inc. , 537 F.2d 4, 9 (CA2 1976). That principle presupposes
that a generic term is at issue. But the PTO’s only legal basis for
deeming “generic.com” terms generic is its mistaken reliance on Goodyear .

															While we reject the rule proffered by the PTO
that “generic.com” terms are generic names, we do not embrace a
rule automatically classifying such terms as nongeneric. Whether
any given “generic.com” term is generic, we hold, depends on
whether consumers in fact perceive that term as the name of a class
or, instead, as a term capable of distinguishing among members of
the class.[ 6 ]

															B

															The PTO, echoed by the dissent, post , at
10–12, objects that protecting “generic.com” terms as trademarks
would disserve trademark law’s animating policies. We disagree.

															The PTO’s principal concern is that trademark
protection for a term like “Booking.com” would hinder competitors.
But the PTO does not assert that others seeking to offer online
hotel-reservation services need to call their services
“Booking.com.” Rather, the PTO fears that trademark protection for
“Booking.com” could exclude or inhibit competitors from using the
term “booking” or adopting domain names like “ebooking.com” or
“hotel-booking.com.” Brief for Petitioners 27–28. The PTO’s
objection, therefore, is not to exclusive use of “Booking.com” as a
mark, but to undue control over similar language, i.e. ,
“booking,” that others should remain free to use.

															That concern attends any descriptive mark.
Responsive to it, trademark law hems in the scope of such marks
short of denying trademark protection altogether. Notably, a
competitor’s use does not infringe a mark unless it is likely to
confuse consumers. See §§1114(1), 1125(a)(1)(A); 4 McCarthy
§23:1.50 (collecting state law). 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.” 2 id. , §11:76. 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. Ibid. Similarly,
“[i]n a ‘crowded’ field of look-alike marks” ( e.g. , hotel
names including the word “grand”), consumers “may have learned to
carefully pick out” one mark from another. Id. , §11:85. And
even where some consumer confusion exists, the doctrine known as
classic fair use, see id. , §11:45, 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 , 122–123 (2004).

															These doctrines guard against the
anticompetitive effects the PTO identifies, ensuring that
registration of “Booking.com” would not yield its holder a monopoly
on the term “booking.” Booking.com concedes that “Booking.com”
would be a “weak” mark. Tr. of Oral Arg. 66. See also id. ,
at 42–43, 55. The mark is descriptive, Booking.com recognizes,
making it “harder . . . to show a likelihood of
confusion.” Id. , at 43. Furthermore, because its mark is one
of many “similarly worded marks,” Booking.com accepts that close
variations are unlikely to infringe. Id. , at 66. And
Booking.com acknowledges that federal registration of “Booking.com”
would not prevent competitors from using the word “booking” to
describe their own services. Id. , at 55.

															The PTO also doubts that owners of
“generic.com” brands need trademark protection in addition to
existing competitive advantages. Booking.com, the PTO argues, has
already seized a domain name that no other website can use and is
easy for consumers to find. Consumers might enter “the word
‘booking’ in a search engine,” the PTO observes, or “proceed
directly to ‘booking.com’ in the expectation that [online
hotel-booking] services will be offered at that address.” Brief for
Petitioners 32. Those competitive advantages, however, do not
inevitably disqualify a mark from federal registration. All
descriptive marks are 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 permits registration
nonetheless. See §1052(e), (f ). And the PTO fails to explain
how the exclusive connection between a domain name and its owner
makes the domain name a generic term all should be free to use.
That connection makes trademark protection more appropriate, not
less. See supra , at 9.

															Finally, even if “Booking.com” is generic, the
PTO urges, unfair-competition law could prevent others from passing
off their services as Booking.com’s. Cf. Genesee Brewing Co. v. Stroh Brewing Co. , 124 F.3d 137 , 149 (CA2 1997); Blinded Veterans Assn. v. Blinded Am. Veterans Foundation , 872 F.2d 1035, 1042–1048
(CADC 1989). But federal trademark registration would offer
Booking.com greater protection. See, e.g. , Genesee
Brewing , 124 F. 3d, at 151 (unfair-competition law would
oblige competitor at most to “make more of an effort” to reduce
confusion, not to cease marketing its product using the disputed
term); Matal , 582 U. S., at ___ (slip op., at 5)
(federal registration confers valuable benefits); Brief for
Respondent 26 (expressing intention to seek protections available
to trademark owners under the Anticybersquatting Consumer
Protection Act, 15 U. S. C. §1125(d)); Brief for
Coalition of .Com Brand Owners as Amici Curiae 14–19
(trademark rights allow mark owners to stop domain-name abuse
through private dispute resolution without resorting to
litigation). We have no cause to deny Booking.com the same benefits
Congress accorded other marks qualifying as nongeneric.

															*  *  *

															The PTO challenges the judgment below on a sole
ground: It urges that, as a rule, combining a generic term with
“.com” yields a generic composite. For the above-stated reasons, we
decline a rule of that order, one that would largely disallow
registration of “generic.com” terms and open the door to
cancellation of scores of currently registered marks. Accordingly,
the judgment of the Court of Appeals for the Fourth Circuit
regarding eligibility for trademark registration is Affirmed. Notes 1 A domain name identifies
an address on the Internet. The rightmost component of a domain
name—“.com” in “Booking.com”—is known as the top-level domain.
Domain names are unique; that is, a given domain name is assigned
to only one entity at a time. 2 For simplicity, this
opinion uses the term “trademark” to encompass the marks whose
registration Booking.com seeks. Although Booking.com uses the marks
in connection with services, not goods, rendering the marks
“service marks” rather than “trademarks” under 15
U. S. C. §1127, that distinction is immaterial to the
issue before us. 3 The U. S. Patent and
Trademark Office (PTO) suggests that the primary-significance test
might not govern outside the context of §1064(3), which subjects to
cancellation marks previously registered that have “become”
generic. See Reply Brief 11; Tr. of Oral Arg. 19. To so confine the
primary-significance test, however, would upset the understanding,
shared by Courts of Appeals and the PTO’s own manual for trademark
examiners, that the same test governs whether a mark is registrable
in the first place. See, e.g. , In re Cordua
Restaurants , Inc. , 823 F.3d 594, 599 (CA Fed. 2016); Nartron Corp. v. STMicroelectronics , Inc. , 305 F.3d 397 , 404 (CA6 2002); Genesee Brewing Co. v. Stroh Brewing Co. , 124 F.3d 137 , 144 (CA2 1997); Trademark Manual of Examining
Procedure §1209.01(c)(i), p. 1200–267 (Oct. 2018),
http://tmep.uspto.gov. We need not address today the scope of the
primary-significance test’s application, for our analysis does not
depend on whether one meaning among several is “primary.”
Sufficient to resolve this case is the undisputed principle that
consumer perception demarcates a term’s meaning. 4 The PTO notes only one
possible exception: Sometimes adding a generic term to a generic
top-level domain results in wordplay (for example, “tennis.net”).
That special case, the PTO acknowledges, is not presented here and
does not affect our analysis. See Brief for Petitioners 25,
n. 6; Tr. of Oral Arg. 25–26. 5 In passing, the PTO urges
us to disregard that a domain name is assigned to only one entity
at a time. That fact, the PTO suggests, stems from “a functional
characteristic of the Internet and the domain-name system,” and
functional features cannot receive trademark protection. Brief for
Petitioners 32. “[A] product feature is functional, and cannot
serve as a trademark,” we have held, “if it is essential to the use
or purpose of the article or if it affects the cost or quality of
the article.” TrafFix Devices , Inc. v. Marketing
Displays , Inc. , 532 U.S.
23 , 32 (2001) (internal quotation marks omitted); see §1052(e)
(barring from the principal registrar “any matter that, as a whole,
is functional”). This case, however, does not concern trademark
protection for a feature of the Internet or the domain-name system;
Booking.com lays no claim to the use of unique domain names
generally. Nor does the PTO contend that the particular domain name
“Booking.com” is essential to the use or purpose of online
hotel-reservation services, affects these services’ cost or
quality, or is otherwise necessary for competitors to use. In any
event, we have no occasion to decide the applicability of
§1052(e)’s functionality bar, for the sole ground on which the PTO
refused registration, and the sole claim before us, is that
“Booking.com” is generic. 6 Evidence informing that
inquiry can include not only consumer surveys, but also
dictionaries, usage by consumers and competitors, and any other
source of evidence bearing on how consumers perceive a term’s
meaning. Surveys can be helpful evidence of consumer perception but
require care in their design and interpretation. See Brief for
Trademark Scholars as Amici Curiae 18–20 (urging that survey
respondents may conflate the fact that domain names are exclusive
with a conclusion that a given “generic.com” term has achieved
secondary meaning). Moreover, difficult questions may be presented
when a term has multiple concurrent meanings to consumers or a
meaning that has changed over time. See, e.g. , 2 J.
McCarthy, Trademarks and Unfair Competition §12:51 (5th ed. 2019)
(discussing terms that are “a generic name to some, a trademark to
others”); id. , §12:49 (“Determining the distinction between
generic and trademark usage of a word . . . when there
are no other sellers of [the good or service] is one of the most
difficult areas of trademark law.”). Such issues are not here
entailed, for the PTO does not contest the lower courts’ assessment
of consumer perception in this case. See Pet. for Cert. I; Brief
for Petitioners 17–18. For the same reason, while the dissent
questions the evidence on which the lower courts relied, post , at 7–8, 9, we have no occasion to reweigh that
evidence. Cf. post , at 1–2 (Sotomayor, J.,
concurring). SUPREME COURT OF THE UNITED STATES

															_________________

															No. 19–46

															_________________

															UNITED STATES PATENT AND TRADEMARK OFFICE, et
al., PETITIONERS v. BOOKING.COM B. V.

															on writ of certiorari to the united states
court of appeals for the fourth circuit

															[June 30, 2020]

															Justice Sotomayor, concurring.

															The question before the Court here is simple:
whether there is a nearly per se rule against trademark
protection for a “generic.com” term. See ante , at 7–8; post , at 10 (Breyer, J., dissenting). I agree with the Court
that there is no such rule, a holding that accords with how the
U. S. Patent and Trademark Office (PTO) has treated such terms
in the past. See ante , at 8 (noting that the “PTO’s own past
practice appears to reflect no such comprehensive rule”). I add two
observations.

															First, the dissent wisely observes that
consumer-survey evidence “may be an unreliable indicator of
genericness.” Post , at 9–10. Flaws in a specific survey
design, or weaknesses inherent in consumer surveys generally, may
limit the probative value of surveys in determining whether a
particular mark is descriptive or generic in this context. But I do
not read the Court’s opinion to suggest that surveys are the be-all
and end-all. As the Court notes, sources such as “dictionaries,
usage by consumers and competitors, and any other source of
evidence bearing on how consumers perceive a term’s meaning” may
also inform whether a mark is generic or descriptive. Ante ,
at 11, n. 6.

															Second, the PTO may well have properly
concluded, based on such dictionary and usage evidence, that
Booking.com is in fact generic for the class of services at issue
here, and the District Court may have erred in concluding to the
contrary. But that question is not before the Court. With these
understandings, I concur in the Court’s opinion. SUPREME COURT OF THE UNITED STATES

															_________________

															No. 19–46

															_________________

															UNITED STATES PATENT AND TRADEMARK OFFICE, et
al., PETITIONERS v. BOOKING.COM B. V.

															on writ of certiorari to the united states
court of appeals for the fourth circuit

															[June 30, 2020]

															Justice Breyer, dissenting.

															What is Booking.com? To answer this question,
one need only consult the term itself. Respondent provides an
online booking service. The company’s name informs the consumer of
the basic nature of its business and nothing more. Therein lies the
root of my disagreement with the majority.

															Trademark law does not protect generic terms,
meaning terms that do no more than name the product or service
itself. This principle preserves 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. Today,
the Court holds that the addition of “.com” to an otherwise generic
term, such as “booking,” can yield a protectable trademark. Because
I believe this result is inconsistent with trademark principles and
sound trademark policy, I respectfully dissent.

															I

															A

															Trademark law protects those
“ ‘distinctive marks—words, names, symbols, and the
like’ ” that “ ‘distinguish 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)). To determine whether a given term is sufficiently
distinctive to serve as a trademark, courts generally place it in
one of five categories. The first four kinds of terms are eligible
for federal trademark registration. The fifth is not.

															I list the first three only to give context and
allow comparisons. They are: (1) “ ‘fanciful’ ” terms,
such as “Kodak” (film); (2) “ ‘arbitrary’ ” terms, such
as “Camel” (cigarettes); and (3) “ ‘suggestive’ ” terms,
such as “Tide” (laundry detergent). Ante, at 3. These kinds
of terms are “ ‘inherently distinctive.’ ” Ibid. The public can readily understand that they identify and
distinguish the goods or services of one firm from those of all
others. See Two Pesos, Inc. v. Taco Cabana, Inc. , 505 U.S.
763 , 768 (1992). By preventing others from copying a
distinctive mark, trademark law “protect[s] the ability of
consumers to distinguish among competing producers” and “secure[s]
to the owner of the mark the goodwill of his business.” Park ’N
Fly, Inc. v. Dollar Park & Fly, Inc ., 469 U.S.
189 , 198 (1985). Ultimately, the purpose of trademark law is to
“foster competition” and “suppor[t] the free flow of commerce.” Matal , 582 U. S., at ___ (slip op., at 3) (internal
quotation marks omitted).

															This case concerns two further categories. There
are “descriptive” terms, such as “Best Buy” (electronics) or “First
National Bank” (banking services), that “immediately conve[y]
information concerning a feature, quality, or characteristic” of
the producer’s goods or services. In re North Carolina
Lottery , 866 F.3d 1363, 1367 (CA Fed. 2017). A descriptive term
can be registered as a trademark only if it acquires “secondary
meaning”— i.e., the public has come to associate it with a
particular firm or its product. Two Pesos , 505 U. S.,
at 769.

															There are also “generic” terms, such as “wine”
or “haircuts.” They do nothing more than inform the consumer of the
kind of product that the firm sells. We have called generic terms
“descriptive of a class of goods.” Goodyear’s India Rubber Glove
Mfg. Co. v. Goodyear Rubber Co. , 128
U.S. 598 , 602 (1888). And we have said that they simply convey
the “genus of which the particular product is a species.” Park
’N Fly , 469 U. S., at 196. A generic term is not eligible
for use as a trademark. That principle applies even if a particular
generic term “ha[s] 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)
(Friendly, J.). The reason is simple. To hold otherwise “would
grant the owner of the mark a monopoly, since a competitor could
not describe his goods as what they are.” Ibid. Courts have recognized that it is not always
easy to distinguish generic from descriptive terms. See, e.g.,
Abercrombie & Fitch Co. v. Hunting World, Inc. , 537
F.2d 4, 9 (CA2 1976) (Friendly, J.). It is particularly difficult
to do so when a firm wishes 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 is not necessarily generic. In
such cases, courts must determine whether the combination of
generic terms conveys some distinctive, source-identifying meaning
that each term, individually, lacks. See 2 J. McCarthy, Trademarks
and Unfair Competition §12:39 (5th ed. June 2020 update)
(McCarthy). If the meaning of the whole is no greater than the sum
of its parts, then the compound is itself generic. See 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) (registration is properly denied
if “the separate words joined to form a compound have a meaning
identical to the meaning common usage would ascribe to those words
as a compound”); see also 2 McCarthy §12:39 (collecting examples of
compound terms held to be generic).

															In Goodyear, 128
U.S. 598 , we held that appending the word
“ ‘Company’ ” to the generic name for a class of goods
does not yield a protectable compound term. Id., at 602–603.
The addition of a corporate designation, we explained, “only
indicates that parties have formed an association or partnership to
deal in such goods.” Id., at 602. For instance, “parties
united to produce or sell wine, or to raise cotton or grain,” may
well “style themselves Wine Company, Cotton Company, or Grain
Company.” Ibid. But they would not thereby gain the right to
exclude others from the use of those terms “for the obvious reason
that all persons have a right to deal in such articles, and to
publish the fact to the world.” Id., at 603.
“[I]ncorporation of a company in the name of an article of
commerce, without other specification,” we concluded, does not
“create any exclusive right to the use of the name.” Ibid. I cannot agree with respondent that the 1946
Lanham Act “repudiate[d] Goodyear and its ilk.” Brief for
Respondent 39. It is true that the Lanham Act altered the common
law in certain important respects. Most significantly, it extended
trademark protection to descriptive marks that have acquired
secondary meaning. See Qualitex Co. v. Jacobson Products
Co. , 514 U.S.
159 , 171 (1995). But it did not disturb the basic principle
that generic terms are ineligible for trademark protection,
and nothing in the Act suggests that Congress intended to overturn Goodyear . We normally assume that Congress did not overturn
a common-law principle absent some indication to the contrary. See Astoria Fed. Sav. & Loan Assn. v. Solimino , 501 U.S.
104 , 108 (1991). I can find no such indication here. Perhaps
that is why the lower courts, the Trademark Trial and Appeal Board
(TTAB), the U. S. Patent and Trademark Office’s (PTO)
Trademark Manual of Examining Procedure (TMEP), and leading
treatises all recognize Goodyear ’s continued validity. See, e.g., In re Detroit Athletic Co. , 903 F.3d 1297, 1304
(CA Fed. 2018); In re Katch, LLC , 2019 WL 2560528, *10 (TTAB
2019); TMEP §§1209.03(d) (Oct. 2018); 2 McCarthy §12:39; 4 L.
Altman & M. Pollack, Callmann on Unfair Competition, Trademarks
and Monopolies §18:11 (4th ed., June 2020 update).

															More fundamentally, the Goodyear principle is sound as a matter of law and logic. Goodyear recognized that designations such as “Company,” “Corp.,” and “Inc.”
merely indicate corporate form and therefore do nothing to
distinguish one firm’s goods or services from all others’. 128
U. S., at 602. It follows that the addition of such a
corporate designation does not “magically transform a generic name
for a product or service into a trademark, thereby giving a right
to exclude others.” 2 McCarthy §12:39. In other words, where a
compound term consists simply of a generic term plus a corporate
designation, the whole is necessarily no greater than the
sum of its parts.

															B

															This case requires us to apply these
principles in the novel context of internet domain names.
Respondent seeks to register a term, “Booking.com,” that consists
of a generic term, “booking” (known as the second-level domain)
plus “.com” (known as the top-level domain). The question at issue
here is whether a term that takes the form “generic.com” is generic
in the ordinary course. In my view, appending “.com” to a generic
term ordinarily yields no meaning beyond that of its constituent
parts. Because the term “Booking.com” is just such an ordinary
“generic.com” term, in my view, it is not eligible for trademark
registration.

															Like the corporate designations at issue in Goodyear , a top-level domain such as “.com” has no capacity
to identify and distinguish the source of goods or services. It is
merely a necessary component of any web address. See 1 McCarthy
§7:17.50. When combined with the generic name of a class of goods
or services, “.com” conveys only that the owner operates a website
related to such items. Just as “Wine Company” expresses the generic
concept of a company that deals in wine, “wine.com” connotes only a
website that does the same. The same is true of “Booking.com.” The
combination of “booking” and “.com” does not serve to “identify a
particular characteristic or quality of some thing; it connotes
the basic nature of that thing ”—the hallmark of a generic term. Blinded Veterans Assn. v. Blinded Am. Veterans
Foundation , 872 F.2d 1035, 1039 (CADC 1989) (Ginsburg, J. for
the court) (emphasis added; internal quotation marks omitted).

															When a website uses an inherently distinctive
second-level domain, it is obvious that adding “.com” merely
denotes a website associated with that term. Any reasonably
well-informed consumer would understand that “post-it.com” is the
website associated with Post-its. See Minnesota Min. & Mfg.
Co. v. Taylor , 21 F. Supp. 2d 1003 , 1005 (Minn. 1998). Likewise,
“plannedparenthood.com” is obviously just the website of Planned
Parenthood. See Planned Parenthood Federation of Am., Inc. v. Bucci , 1997 WL 133313, *8 (SDNY, Mar. 24, 1997).
Recognizing this feature of domain names, courts generally ignore
the top-level domain when analyzing likelihood of confusion. See Brookfield Communications, Inc. v. West Coast
Entertainment Corp. , 174 F.3d 1036 , 1055 (CA9 1999).

															Generic second-level domains are no different.
The meaning conveyed by “Booking.com” is no more and no less than a
website associated with its generic second-level domain, “booking.”
This will ordinarily be true of any generic term plus “.com”
combination. The term as a whole is just as generic as its
constituent parts. See 1 McCarthy §7:17.50; 2 id .,
§12:39.50.

															There may be exceptions to this rule in rare
cases where the top-level domain interacts with the generic
second-level domain in such a way as to produce meaning distinct
from that of the terms taken individually. See ante, at 8,
n. 4. Likewise, the principles discussed above may apply
differently to the newly expanded universe of top-level domains,
such as “.guru,” “.club,” or “.vip,” which may “conve[y]
information concerning a feature, quality, or characteristic” of
the website at issue. In re North Carolina Lottery , 866
F. 3d, at 1367; see also Brief for International Trademark
Association as Amicus Curiae 10–11; TMEP § 1209.03(m).
These scenarios are not presented here, as “Booking.com” conveys
only a website associated with booking.

															C

															The majority believes that Goodyear is
inapposite because of the nature of the domain name system. Because
only one entity can hold the contractual rights to a particular
domain name at a time, it contends, consumers may infer that a
“generic.com” domain name refers to some specific entity. Ante , at 9.

															That fact does not distinguish Goodyear .
A generic term may suggest that it is associated with a specific
entity. That does not render it nongeneric. For example, “Wine,
Inc.” implies the existence of a specific legal entity incorporated
under the laws of some State. Likewise, consumers may perceive “The
Wine Company” to refer to some specific company rather than a genus
of companies. But the addition of the definite article “the”
obviously does not transform the generic nature of that term. See In re The Computer Store, Inc. , 211 USPQ 72, 74–75
(TTAB 1981). True, these terms do not carry the exclusivity of a
domain name. But that functional exclusivity does not negate the
principle animating Goodyear : Terms that merely convey the
nature of the producer’s business should remain free for all to
use. See 128 U. S., at 603.

															This case illustrates the difficulties inherent
in the majority’s fact-specific approach. The lower courts
determined (as the majority highlights), that consumers do not use
the term “Booking.com” to refer to the class of hotel reservation
websites in ordinary speech. 915 F.3d 171, 181–183 (CA4 2019); ante, at 7. True, few would call Travelocity a
“Booking.com.” Ibid. But literal use is not dispositive. See
915 F. 3d, at 182; H. Marvin Ginn Corp. v. International
Assn. of Fire Chiefs, Inc. , 782 F.2d 987, 989–990 (CA Fed.
1986). Consumers do not use the term “Wine, Incs.” to refer to
purveyors of wine. Still, the term “Wine, Inc.” is generic because
it signifies only a company incorporated for that purpose. See Goodyear , 128 U. S., at 602–603. Similarly, “Booking,
Inc.” may not be trademarked because it signifies only a booking
company. The result should be no different for “Booking.com,” which
signifies only a booking website.

															More than that, many of the facts that the Court
supposes may distinguish some “generic.com” marks as descriptive
and some as generic are unlikely to vary from case to case. There
will never be evidence that consumers literally refer to the
relevant class of online merchants as “generic.coms.” Nor are
“generic.com” terms likely to appear in dictionaries. And the key
fact that, in the majority’s view, distinguishes this case from Goodyear —that only one entity can own the rights to a
particular domain name at a time—is present in every “generic.com”
case. See ante , at 9.

															What, then, stands in the way of automatic
trademark eligibility for every “generic.com” domain? Much of the
time, that determination will turn primarily on survey evidence,
just as it did in this case. See 915 F. 3d, at 183–184.

															However, survey evidence has limited probative
value in this context. Consumer surveys often test whether
consumers associate a term with a single source. See 2 McCarthy
§12:14–12:16 (describing types of consumer surveys). But it is
possible for a generic term to achieve such an association—either
because that producer has enjoyed a period of exclusivity in the
marketplace, e . g ., Kellogg Co. v. National
Biscuit Co. , 305 U.S.
111 , 118–119 (1938), or because it has invested money and
effort in securing the public’s identification, e . g ., Abercrombie , 537 F. 2d, at 9. Evidence of such an
association, no matter how strong, does not negate the generic
nature of the term. Ibid . For that reason, some courts and
the TTAB have concluded that survey evidence is generally of little
value in separating generic from descriptive terms. See 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); In re Hikari Sales USA, Inc. , 2019 WL
1453259, *13 (TTAB 2019). Although this is the minority viewpoint,
see 2 McCarthy §12:17.25, I nonetheless find it to be the more
persuasive one.

															Consider the survey evidence that respondent
introduced below. Respondent’s survey showed that 74.8% of
participants thought that “Booking.com” is a brand name, whereas
23.8% believed it was a generic name. App. 66. At the same time,
33% believed that “Washingmachine.com”—which does not correspond to
any company—is a brand, and 60.8% thought it was generic. Ibid. What could possibly account for that difference?
“Booking.com” is not inherently more descriptive than
“Washingmachine.com” or any other “generic.com.” The survey
participants who identified “Booking.com” as a brand likely did so
because they had heard of it, through advertising or otherwise. If
someone were to start a company called “Washingmachine.com,” it
could likely secure a similar level of consumer identification by
investing heavily in advertising. Would that somehow transform the
nature of the term itself? Surely not. This hypothetical shows that
respondent’s survey tested consumers’ association of “Booking.com”
with a particular company, not anything about the term itself. But
such association does not establish that a term is nongeneric. See Kellogg , 305 U. S., at 118–119; Abercrombie , 537
F. 2d, at 9.

															Under the majority’s approach, a “generic.com”
mark’s eligibility for trademark protection turns primarily on
survey data, which, as I have explained, may be an unreliable
indicator of genericness. As the leading treatise writer in this
field has observed, this approach “[d]iscard[s] the predictable and
clear line rule of the [PTO] and the Federal Circuit” in favor of
“a nebulous and unpredictable zone of generic name and top level
domain combinations that somehow become protectable marks when
accompanied by favorable survey results.” 1 McCarthy §7:17.50. I
would heed this criticism. In my view, a term that takes the form
“generic.com” is not eligible for federal trademark registration,
at least not ordinarily. There being no special circumstance here,
I believe that “Booking.com” is a generic term not eligible for
federal registration as a trademark.

															II

															In addition to the doctrinal concerns
discussed above, granting trademark protection to “generic.com”
marks threatens serious anticompetitive consequences in the online
marketplace.

															The owners of short, generic domain names enjoy
all the advantages of doing business under a generic name. These
advantages exist irrespective of the trademark laws. Generic names
are easy to remember. Because they immediately convey the nature of
the business, the owner needs to expend less effort and expense
educating consumers. See Meystedt, What Is My URL Worth? Placing a
Value on Premium Domain Names, 19 Valuation Strategies 10, 12
(2015) (Meystedt) (noting “ability to advertise a single URL and
convey exactly what business a company operates”); cf. Folsom &
Teply, Trademarked Generic Words, 89 Yale L. J. 1323,
1337–1338 (1980) (Folsom & Teply) (noting “ ‘free
advertising’ effect”). And a generic business name may create the
impression that it is the most authoritative and trustworthy source
of the particular good or service. See Meystedt 12 (noting that
generic domain names inspire “[i]nstant trust and credibility” and
“[a]uthority status in an industry”); cf. Folsom & Teply 1337,
n. 79 (noting that consumers may believe that “no other product is
the ‘real thing’ ”). These advantages make it harder for
distinctively named businesses to compete.

															Owners of generic domain names enjoy additional
competitive advantages unique to the internet—again, regardless of
trademark protection. Most importantly, domain name ownership
confers automatic exclusivity. Multiple brick-and-mortar companies
could style themselves “The Wine Company,” but there can be only
one “wine.com.” And unlike the trademark system, that exclusivity
is world-wide.

															Generic domains are also easier for consumers to
find. A consumer who wants to buy wine online may perform a keyword
search and be directed to “wine.com.” Or he may simply type
“wine.com” into his browser’s address bar, expecting to find a
website selling wine. See Meystedt 12 (noting “ability to rank
higher on search engines” and “ability to use existing type-in
traffic to generate additional sales”); see also 915 F. 3d, at
189 (Wynn, J., concurring in part and dissenting in part). The
owner of a generic domain name enjoys these benefits not because of
the quality of her products or the goodwill of her business, but
because she was fortunate (or savvy) enough to be the first to
appropriate a particularly valuable piece of online real
estate.

															Granting trademark protection to “generic.com”
marks confers additional competitive benefits on their owners by
allowing them to exclude others from using similar domain
names. Federal registration would allow respondent to threaten
trademark lawsuits against competitors using domains such as
“Bookings.com,” “eBooking.com,” “Booker.com,” or “Bookit.com.”
Respondent says that it would not do so. See Tr. of Oral Arg.
55–56. But other firms may prove less restrained.

															Indeed, why would a firm want to register its
domain name as a trademark unless it wished to extend its area of
exclusivity beyond the domain name itself? The domain name system,
after all, already ensures that competitors cannot appropriate a
business’s actual domain name. And unfair-competition law will
often separately protect businesses from passing off and false
advertising. See Genesee Brewing Co. v. Stroh Brewing
Co. , 124 F.3d 137 , 149 (CA2 1997); 2 McCarthy §12:2.

															Under the majority’s reasoning, 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 grows.
Those consequences can nudge the economy in an anticompetitive
direction. At the extreme, that direction points towards one firm
per product, the opposite of the competitive multifirm marketplace
that our basic economic laws seek to achieve.

															Not to worry, the Court responds, infringement
doctrines such as likelihood of confusion and fair use will
restrict the scope of protection afforded to “generic.com” marks. Ante, at 12–13. This response will be cold comfort to
competitors of “generic.com” brands. Owners of such marks may seek
to extend the boundaries of their marks through litigation, and
may, at times succeed. See, e.g. , Advertise.com v. AOL, LLC , 2010 WL 11507594 (CD Cal.) (owner of
“Advertising.com” obtained preliminary injunction against
competitor’s use of “Advertise.com”), vacated in part, 616 F.3d 974
(CA9 2010). Even if ultimately unsuccessful, the threat of costly
litigation will no doubt chill others from using variants on the
registered mark and privilege established firms over new entrants
to the market. See Brief for Electronic Frontier Foundation as Amicus Curiae 19–20.

															*  *  *

															In sum, the term “Booking.com” refers to an
internet booking service, which is the generic product that
respondent and its competitors sell. No more and no less. The same
is true of “generic.com” terms more generally. By making such terms
eligible for trademark protection, I fear that today’s decision
will lead to a proliferation of “generic.com” marks, granting their
owners a monopoly over a zone of useful, easy-to-remember domains.
This result would tend to inhibit, rather than to promote, free
competition in online commerce. I respectfully dissent.