Amici in this brief ask the court to review consumer perception analysis and evidence relevant to assessing whether a domain name is a generic term or a brand name.
Note: In June 2020, the U.S. Supreme Court found in favor of Booking.com B.V.
Dominique Hanssens of the University of California, Los Angeles, Dave Reibstein of the University of Pennsylvania, Ronald Wilcox of the University of Virginia, and Cornerstone Research were listed amici in a brief submitted to the Supreme Court in United States Patent and Trademark Office et al. v. Booking.com B.V. The brief was submitted on behalf of the respondent.
The petitioners argue that a generic domain name’s root (e.g., “booking”) and generic domain name’s suffix (e.g., “.com”) always produce a generic mark when combined. The amici in this brief explain that marks are analyzed for their primary significance to consumers and as a whole, and the petitioners in this case have asked the court to treat domain names differently from all other marks. The amici explain that how consumers perceive a mark should be assessed on a case-by-case basis.
According to the amici, survey evidence and market evidence of consumer usage should be considered to understand how consumers perceive a mark. In this case, the respondent conducted a “Teflon” survey, which is the most accepted type of survey for testing genericness. The respondent’s Teflon survey indicated that the majority of survey participants understood the term “Booking.com” as a brand. The amici argue that additional market evidence of consumer usage and understanding of Booking.com, including online search data, also supports this conclusion.
The amicus brief encourages the court to analyze domain-name marks like all other types of marks. This includes assessing how such marks are perceived by consumers, including with survey evidence.