                                         PUBLISHED

                           UNITED STATES COURT OF APPEALS
                               FOR THE FOURTH CIRCUIT


                                          No. 17-2458


BOOKING.COM B.V.,

               Plaintiff – Appellee,

v.

THE UNITED STATES PATENT AND TRADEMARK OFFICE; ANDREI
IANCU, in his official capacity as Under Secretary of Commerce for Intellectual
Property and Director of the United States Patent and Trademark Office,

               Defendants – Appellants.

------------------------------

AMERICAN INTELLECTUAL PROPERTY LAW ASSOCIATION,

               Amicus Curiae.


                                          No. 17-2459


BOOKING.COM B.V.,

               Plaintiff – Appellant,

v.

THE UNITED STATES PATENT AND TRADEMARK OFFICE; ANDREI
IANCU, in his official capacity as Under Secretary of Commerce for Intellectual
Property and Director of the United States Patent and Trademark Office,


               Defendants – Appellees.
------------------------------

AMERICAN INTELLECTUAL PROPERTY LAW ASSOCIATION,

                Amicus Curiae.



Appeals from the United States District Court for the Eastern District of Virginia, at
Alexandria. Leonie M. Brinkema, District Judge. (1:16-cv-425-LMB-IDD)


Argued: October 31, 2018                                   Decided: February 4, 2019


Before KING, DUNCAN, and WYNN, Circuit Judges.


Affirmed by published opinion. Judge Duncan wrote the opinion, in which Judge King
concurred. Judge Wynn wrote a separate opinion concurring in part and dissenting in
part.


ARGUED: Tyce R. Walters, UNITED STATES DEPARTMENT OF JUSTICE,
Washington, D.C., for Appellants/Cross-Appellees. Jonathan Ellis Moskin, FOLEY &
LARDNER LLP, New York, New York, for Appellee/Cross-Appellant. ON BRIEF:
Chad A. Readler, Acting Assistant Attorney General, Nathan K. Kelley, Solicitor,
Thomas W. Krause, Deputy Solicitor, Christina J. Hieber, Senior Counsel for Trademark
Litigation, Mark R. Freeman, Civil Division, UNITED STATES DEPARTMENT OF
JUSTICE, Washington, D.C.; Tracy Doherty-McCormick, Acting United States
Attorney, OFFICE OF THE UNITED STATES ATTORNEY, Alexandria, Virginia;
Mary Beth Walker, Associate Solicitor, Molly R. Silfen, Associate Solicitor, Office of
the Solicitor, UNITED STATES PATENT & TRADEMARK OFFICE, Alexandria,
Virginia; for Appellants/Cross-Appellees. Brian Kapatkin, Eoin Connolly, FOLEY &
LARDNER LLP, Washington, D.C., for Appellee/Cross-Appellant.                 Myra H.
McCormack, President, AMERICAN INTELLECTUAL PROPERTY LAW
ASSOCIATION, Arlington, Virginia; Theodore H. Davis, Jr., Jennifer R. Findley,
Alexandra N. Martinez, KILPATRICK TOWNSEND & STOCKTON LLP, Atlanta,
Georgia, for Amicus Curiae.




                                          2
DUNCAN, Circuit Judge:

       The United States Patent and Trademark Office (the “USPTO”) and Booking.com

(“Booking.com”) both appeal the district court’s summary judgment ruling regarding the

protectability of the proposed trademark BOOKING.COM. 1 The USPTO appeals on the

ground that the district court erred in concluding that BOOKING.COM is a protectable

mark. Booking.com cross appeals, arguing that it should not be required to pay the

USPTO’s attorneys fees under 15 U.S.C. § 1071(b)(3). For the reasons that follow we

affirm as to both the appeal and the cross-appeal.



                                             I.

       Before we recount the facts of this case, we briefly discuss the legal trademark

context in which it arises. Trademark law protects the goodwill represented by particular

marks and serves the twin objectives of preventing consumer confusion between products

and the sources of those products, on the one hand, and protecting the linguistic commons

by preventing exclusive use of terms that represent their common meaning, on the other.

OBX-Stock, Inc. v. Bicast, Inc., 558 F.3d 334, 339–40 (4th Cir. 2009).

       In order to be protectable, marks must be “distinctive.” To determine whether a

proposed mark is protectable, courts ascertain the strength of the mark by placing it into

one of four categories of distinctiveness, in ascending order: (1) generic, (2) descriptive,


       1
      Throughout this opinion, we use Booking.com to refer to the Plaintiff-Appellant
and BOOKING.COM to refer to the proposed mark.


                                             3
(3) suggestive, or (4) arbitrary or fanciful. George & Co. v. Imagination Entm’t Ltd., 575

F.3d 383, 393–94 (4th Cir. 2009). Marks falling into the latter two categories are deemed

inherently distinctive and are entitled to protection because their intrinsic nature serves to

identify the particular source of a product.       In contrast, descriptive terms may be

distinctive only upon certain showings, and generic terms are never distinctive. This

dispute concerns only the first two of these four categories, with Booking.com arguing

the mark is descriptive and the USPTO arguing it is generic.

       A term is generic if it is the “common name of a product” or “the genus of which

the particular product is a species,” such as LITE BEER for light beer, or CONVENIENT

STORE for convenience stores. OBX-Stock, Inc., 558 F.3d at 340. Generic terms do not

contain source-identifying significance--they do not distinguish the particular product or

service from other products or services on the market. George & Co., 575 F.3d at 394.

Accordingly, generic terms can never obtain trademark protection, as trademarking a

generic term effectively grants the owner a monopoly over a term in common coinage. If

protection were allowed, a competitor could not describe his goods or services as what

they are. CES Publ’g Corp. v. St. Regis Publ’ns, Inc., 531 F.2d 11, 13 (2d Cir. 1975).

       In contrast, descriptive terms, which may be protectable, describe a “function, use,

characteristic, size, or intended purpose of the product,” such as 5 MINUTE GLUE or

KING SIZE MEN’S CLOTHING. Sara Lee Corp. v. Kayser-Roth Corp., 81 F.3d 455,

464 (4th Cir. 1996). In order to be protected, a descriptive term must have acquired

secondary meaning. Hunt Masters, Inc. v. Landry’s Seafood Rest., Inc., 240 F.3d 251,

254 (4th Cir. 2001). Secondary meaning indicates that a term has become sufficiently

                                              4
distinctive to establish a mental association in the relevant public’s minds between the

proposed mark and the source of the product or service. George & Co., 575 F.3d at 394.

       Against this background, we consider the facts before us.



                                            II.

       Booking.com operates a website on which customers can book travel and hotel

accommodations. It has used the name BOOKING.COM since at least 2006. In 2011

and 2012, Booking.com filed four trademark applications for the use of BOOKING.COM

as a word mark and for stylized versions of the mark with the USPTO. Booking.com

sought registration for, inter alia, Class 43 services, which include online hotel

reservation services. 2

       The USPTO examiner rejected Booking.com’s applications, finding that the marks

were not protectable because BOOKING.COM was generic as applied to the relevant

services.   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. After the examiner denied Booking.com’s




       2
         The applications also identified Class 39 services, which include “travel and tour
ticket reservation services” and “online travel and tourism services.” Booking.com B.V.
v. Matal, 278 F. Supp. 3d 891, 896–97 (E.D. Va. 2017). Because the district court found
that the marks were only protectable as to Class 43 services and remanded with respect to
Class 39 services, and Booking.com does not challenge this ruling on appeal, we consider
only whether BOOKING.COM is protectable as to Class 43 services.


                                            5
motion for reconsideration, Booking.com appealed to the Trademark Trial and Appeal

Board (the “TTAB”).

       The TTAB affirmed the USPTO’s four refusals of registration in three separate

opinions. These opinions all concluded that BOOKING.COM was a generic term for the

services offered, and therefore ineligible for trademark protection, because “booking”

generically refers to “a reservation or arrangement to buy a travel ticket or stay in a hotel

room” or “the act of reserving such travel or accommodation”; “.com” indicates a

commercial website; and consumers would understand the resulting composite

BOOKING.COM to primarily refer to an online reservation service for travel, tours, and

lodging, which are the services proposed in Booking.com’s applications. Booking.com

B.V. v. Matal, 278 F. Supp. 3d 891, 896 (E.D. Va. 2017) (summarizing the TTAB’s

findings).   In the alternative, the TTAB concluded that BOOKING.COM is merely

descriptive of Booking.com’s services and that Booking.com had failed to demonstrate

that the mark had acquired secondary meaning, as required for trademark protection.

       Booking.com appealed the TTAB’s decisions by filing this civil action under 15

U.S.C. § 1071(b) against the USPTO and the USPTO’s director in the Eastern District of

Virginia in April 2016. 3 It argued that BOOKING.COM was a descriptive or suggestive

mark eligible for protection. In support of its argument, Booking.com submitted new




       3
         As we discuss further below, Booking.com could have appealed to the Federal
Circuit but declined to do so.


                                             6
evidence to the district court. This evidence included a “Teflon survey,” 4 indicating that

74.8% of consumers recognized BOOKING.COM as a brand rather than a generic

service.

       The district court held that although “booking” was a generic term for the services

identified, BOOKING.COM as a whole was nevertheless a descriptive mark. The district

court further determined that Booking.com had met its burden of demonstrating that the

proposed mark had acquired secondary meaning, and therefore was protectable, as to the

hotel reservation services described in Class 43. The court therefore partially granted

Booking.com’s motion for summary judgment, ordering the USPTO to register two of the

marks and remanded for further administrative proceedings as to the other two.

       The USPTO subsequently filed two motions. Pursuant to Federal Rule of Civil

Procedure 59(e), the USPTO sought to amend the court’s order requiring the USPTO to

register the two trademarks, requesting instead that the court remand for further

administrative proceedings. It also filed a motion for expenses pursuant to 15 U.S.C.

§ 1071(b)(3), which would require Booking.com to pay $76,873.61 of the USPTO’s

expenses under 15 U.S.C. § 1071(b)(3). These expenses included the salaries of the

PTO’s attorneys and paralegals that worked on the defense action. The district court

denied the USPTO’s motion to amend as to the two marks, reasoning that they were


       4
         Teflon surveys are the “most widely used survey format to resolve a genericness
challenge.” 2 McCarthy on Trademarks at § 12:16. These surveys explain the distinction
between generic names and trademark or brand names and then ask survey respondents to
identify a series of names as common or brand names.


                                            7
registerable as trademarks and that no further administrative proceedings were necessary.

However, the district court granted the USPTO’s motion for expenses. Both the USPTO

and Booking.com appealed.       The USPTO and Booking.com challenge, respectively,

whether BOOKING.COM is protectable, and whether Booking.com must pay the

USPTO’s attorneys fees.


                                            III.

       We turn first to the USPTO’s contention that the district court erred in concluding

that BOOKING.COM is a protectable trademark.                 According to the USPTO,

BOOKING.COM is a generic, not a descriptive, term that can never be protected.

       We review a district court’s grant of summary judgment based on the conclusion

that a mark is sufficiently distinctive to warrant trademark protection de novo. Retail

Servs. Inc. v. Freebies Publ’g, 364 F.3d 535, 541–42 (4th Cir. 2004). The question of

whether a proposed mark is generic is a question of fact that is subject to deferential

review. See Swatch AG v. Beehive Wholesale, LLC, 739 F.3d 150, 155 (4th Cir. 2014)

(citing Pizzeria Uno Corp. v. Temple, 747 F.2d 1522, 1533 (4th Cir. 1984)).

       Critically to our analysis, the USPTO concedes that if BOOKING.COM may

properly be deemed descriptive, the district court’s finding that it has acquired secondary

meaning was warranted.       Rather, the USPTO only challenges the district court’s

determination that BOOKING.COM is not generic. Therefore, the limited question on

appeal is whether the district court erred in finding that BOOKING.COM is not generic.

For the reasons that follow, we conclude that the district court did not err in finding that


                                             8
there was no genuine issue of material fact on the issue of genericness and that, on these

facts, BOOKING.COM is a protectable trademark.

       Before undertaking our analysis, two issues pertinent to the genericness inquiry

bear further elaboration: first, who bears the burden of proving genericness, and second,

the framework for determining whether a proposed mark is generic.



                                            A.

       We have never directly addressed the issue of which party bears the burden of

proving genericness on appeal when registration of a mark is denied. 5 However, the

Federal Circuit has long held, and we agree, that in registration proceedings, the USPTO

“always bears the burden” of establishing that a proposed mark is generic. In re Cordua

Rests., Inc., 823 F.3d 594, 600 (Fed. Cir. 2016); see In re Merrill Lynch, Pierce, Fenner,

and Smith, Inc., 828 F.2d 1567, 1571 (Fed. Cir. 1987) (explaining that the burden of

proving genericness “remains with” the PTO) (emphasis added). This is so because

finding a mark to be generic carries significant consequence, as it forecloses an applicant

from any rights over the mark--once a mark is determined to be generic, it can never

receive trademark protection. See 2 J. Thomas McCarthy, McCarthy on Trademarks and


       5
         In trademark infringement proceedings, we have held that the burden of proof
lies with the party claiming that a previously registered mark is generic because there is a
presumption of validity. See Glover v. Ampak, Inc., 74 F.3d 57, 59 (4th Cir. 1996).
Where a mark is not registered, however, and the alleged infringer asserts genericness as
a defense, the plaintiff bears the burden of proving that the mark is not generic. See Ale
House Mgmt. Inc. v. Raleigh Ale House, Inc., 205 F.3d 137, 140 (4th Cir. 2000).


                                             9
Unfair Competition, § 12:12 (5th ed. 2018) (explaining that finding a mark to be generic

is a “fateful step” as it may result in the “loss of rights which could be valuable

intellectual property”).

       We therefore hold here that the USPTO bears the burden of proving that

BOOKING.COM is generic in the instant case.



                                             B.

       We next discuss the framework for determining whether a mark is generic. As we

have discussed, generic terms are the “common name of a product or service itself.”

Sara Lee, 81 F.3d at 464. To determine whether a term is generic, we follow a three-step

test: (1) identify the class of product or service to which use of the mark is relevant; (2)

identify the relevant consuming public; and (3) determine whether the primary

significance of the mark to the relevant public is as an indication of the nature of the class

of the product or services to which the mark relates, which suggests that it is generic, or

an indication of the source or brand, which suggests that it is not generic. 6 Glover v.

Ampak, Inc., 74 F.3d 57, 59 (4th Cir. 1996).


       6
         The Lanham Act codifies the primary significance test as the test for determining
whether a registered trademark has become generic in cancellation of registration
proceedings. 15 U.S.C. § 1064(3) (“The 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 on or in connection with which it has been
used.”); see Glover, 74 F.3d at 59. However, we and the Federal Circuit have also
applied the primary significance test to determine genericness in registration proceedings.
See In re 1800Mattress.com IP, LLC, 586 F.3d 1359, 1362–63 (Fed. Cir. 2009) (applying
a two-step genericness inquiry, asking in part whether the term sought to be registered is
(Continued)
                                             10
       Once a term is deemed generic, it cannot subsequently become non-generic. A

term may be generic if, for example, it was previously determined to be generic by a

court. Kellogg Co. v. Nat’l Biscuit Co., 305 U.S. 111, 117 (1938) (finding that “shredded

wheat” was generic because a court had already deemed it to be so). A term may also be

deemed generic where evidence suggests that a term was “commonly used prior to its

association with the products [or services] at issue.” Hunt Masters, 240 F.3d at 254–55.

In such cases of common usage, a court may find that a term is generic even without

looking to evidence of consumer recognition. Id. For example, in Hunt Masters, we

found that the term “crab house” was commonly used, as there were many restaurants

called “crab houses” across the country, id. at 254 n.1, and concluded, therefore, that the

district court did not err in declining to consider consumer survey evidence.

       If a term is deemed generic, subsequent consumer recognition of the term as

brand-specific cannot change that determination. See Retail Servs., Inc., 364 F.3d at 547.

Indeed, courts have explained that “no matter how much money and effort the user of a

generic term has poured into promoting the sale of its merchandise and what success it

has achieved in securing public identification,” that user cannot claim the exclusive right




“understood by the relevant public to refer to that genus of goods or services”) (citation
omitted); In re Reed Elsevier Props., Inc., 482 F.3d 1376, 1378 (Fed. Cir. 2007) (same);
see also America Online, Inc. v. AT&T Corp., 243 F.3d 812, 822 (4th Cir. 2001)
(determining that a mark was generic because the evidence “d[id] not reveal that the
primary significance of the term” was the source rather than its generic meaning)
(emphasis added).


                                            11
through trademark protection to call the product or service by its common name.

Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir. 1976).

       In this case, neither party disputes the district court’s finding at the first step: that

the mark is used to identify the class or product to which it belongs--here, making hotel

reservations for others. Nor do they disagree as to step two: that the relevant purchasing

public consists of consumers who use hotel reservation services offered via the internet or

in person. Instead, the dispute arises at the third step: the public’s understanding of what

the term BOOKING.COM primarily refers to.

       To ascertain the public’s understanding of a term, courts may look to “purchaser

testimony, consumer surveys, listings and dictionaries, trade journals, newspapers, and

other publications.” Glover, 74 F.3d at 59. For example, in determining that the term

“ale house” was generic for a facility that serves both food and beer, we considered

newspaper articles and restaurant reviews that referred to such facilities as “ale houses,”

as well as the lack of evidence suggesting that it was not a generic term for such

institutions. Ale House Mgmt., Inc. v. Raleigh Ale House, Inc., 205 F.3d 137, 140–41

(4th Cir. 2000).

       In assessing whether a term is understood by the relevant public to primarily refer

to the service or the source, we look to the proposed mark as a whole, see Hunt Masters,

240 F.3d at 254 (“[A] mark must be considered as a whole to determine its validity.”).

Even where a proposed mark is a phrase or a compound term, such as “crab house” or

“ale house,” the relevant inquiry is the public’s understanding of the entire mark, not its



                                              12
understanding of the mark’s separate components independently.               Estate of P.D.

Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 545–46 (1920).

       With this framework for genericness in mind, we turn to the USPTO’s contention

on appeal that the district court erred in finding that BOOKING.COM is a descriptive,

rather than a generic, mark.


                                             C.

       We hold that the district court, in weighing the evidence before it, did not err in

finding that the USPTO failed to satisfy its burden of proving that the relevant public

understood BOOKING.COM, taken as a whole, to refer to general online hotel

reservation services rather than Booking.com the company.             Because the USPTO

concedes that, if the mark is descriptive, it is protectable, this ends our inquiry. In

affirming the district court’s finding, we reject the USPTO’s contention that adding the

top-level domain (a “TLD”) .com to a generic second-level domain (an “SLD”) like

booking can never yield a non-generic mark. We turn first to the district court’s finding

on genericness before addressing the USPTO’s proposed rule.



                                              i.

       Genericness is a question of fact to which the district court, as the trier of fact, is

accorded great deference. 7 See Swatch AG, 739 F.3d at 155. Here, in finding that the


       7
         Specifically, we defer to the district court’s factual finding regarding the primary
significance of the mark to the public—a finding for which the court applied the proper
(Continued)
                                             13
public’s understanding of BOOKING.COM, taken as a whole, establishes it as a

descriptive mark rather than a generic term, the district court relied on two main factors:

the USPTO’s lack of evidence demonstrating that the public uses “booking.com”

generically, and Booking.com’s Teflon survey. We conclude that the district court did

not err in finding that the evidence weighed in favor of finding BOOKING.COM to be

non-generic.

       First, the district court found “highly relevant” the absence of evidence by the

USPTO that consumers commonly refer to online hotel reservation services as

“bookings.com.”     Booking.com B.V., 278 F. Supp. 3d at 914.          Instead, the court

determined that the USPTO’s evidence demonstrated that such services are referred to as

“booking website(s),” or “booking site(s).” Id.

       While the USPTO identified other domain names that contain “booking.com”--

such as “hotelbooking.com” and “ebooking.com”--to support its argument that the

relevant public understands BOOKING.COM to refer to online hotel booking services,

the district court did not err in finding this evidence less probative of common usage. It

is true that some courts have found the use of a proposed mark in longer domain names to

be evidence in support of finding that term generic. See, e.g., Advertise.com, Inc. v. AOL




legal analysis—and not the court’s determination as to the trademark significance of the
fact that a domain name like “booking.com” necessarily refers only to a single source. In
fact, we conclude that the court erred in this latter determination, discussed infra; but
contrary to the Dissent’s position, such error does not affect the court’s separate factual
finding as to primary significance. See Booking.com B.V., 278 F. Supp. 3d at 913–18.


                                            14
Advertising, Inc., 616 F.3d 974, 980–81 (9th Cir. 2010) (finding that the way in which

ADVERTISING.COM was used in other domain names was evidence of genericness); In

re Hotels.com, L.P., 573 F.3d 1300, 1304 (Fed. Cir. 2009) (same for HOTELS.COM); In

re Reed Elsevier Props., Inc., 482 F.3d 1376, 1380 (Fed. Cir. 2007) (same for

LAWYERS.COM). We note, however, that although those courts recognized that the

inclusion of the proposed mark in longer domain names was strong evidence of

genericness, they nonetheless remained open to considering consumer surveys to

determine the public’s understanding of the proposed mark. See, e.g., In re Hotels.com,

573 F.3d at 1304–05 (finding that the TTAB did not err in determining that the term was

generic, citing in part concerns arising from the methodology of the applicant’s consumer

survey). Moreover, using the characters “booking.com” or “bookings.com” in a longer

domain name does not necessarily mean that BOOKING.COM is generic.                 Unlike

“hotels” or “lawyers,” “booking” is used to describe a plethora of reservation services,

including, for example, theatrical or musical engagements. See Booking.com B.V., 278 F.

Supp. 3d at 904 (quoting Random House: Unabridged Dictionary (2d ed. 1993)).

Including booking.com in a longer domain name therefore does not necessarily

demonstrate that consumers would understand BOOKING.COM to identify any website

that provides hotel reservation services. In fact, the record evidence demonstrates the

opposite.

      The USPTO challenges the court’s weighing of this evidence, contending that the

district court erred in emphasizing that the public does not use “booking.com” to refer to

the relevant services, and instead should have evaluated whether the public would

                                           15
understand the term to refer to those services. We agree with the USPTO that the

ultimate inquiry in determining whether a term is generic is what the public understands

the proposed mark to mean. Glover, 74 F.3d at 59. Nonetheless, courts have considered

usage to be probative of the public’s understanding. Compare In re Dial-A-Mattress, 240

F.3d 1341, 1346 (Fed. Cir. 2001) (finding that a mark was not generic where there was no

evidence that the relevant public referred to the class of shop-at-home mattress retailers

as “1-888-M-A-T-R-E-S-S”), with Frito-Lay N. Am. Inc. v. Princeton Vanguard, LLC,

124 U.S.P.Q.2d 1184 at *6–10 (TTAB 2017) (finding “pretzel crisp” to be generic where

the record evidence, including newspaper articles and food blogs, used the term to refer

to the genus of snack products rather than a particular brand), and Ale House Mgmt., 205

F.3d at 140–41 (finding “ale house” to be generic for facilities that serve food and beer

where newspaper articles and restaurant reviews referred to such facilities as “ale

houses”). It is therefore not error for a court to consider, as the court did here, evidence

of the public’s use of a term in evaluating its primary significance to the public. 8 And in

any event, as we will discuss, the consumer surveys in this record suggest that the public

primarily understands BOOKING.COM to indicate the company rather than the service.

       Second, the district court also considered Booking.com’s Teflon survey, which

demonstrates that 74.8% of respondents identified BOOKING.COM as a brand name,


       8
         Because the relevant inquiry is what the mark’s primary significance is to the
public, we do not consider the district court’s suggestion, relying on Booking.com’s
linguistic expert, that “linguistic understanding” cannot be divorced from use.
Booking.com B.V., 278 F. Supp. 3d at 914 (alteration and citation omitted).


                                            16
rather than as a general reference to hotel reservation websites. Such consumer surveys

are the “preferred method of proving genericness.” Princeton Vanguard, LLC v. Frito-

Lay N. Am., Inc., 786 F.3d 960, 970 (Fed. Cir. 2015) (citation omitted). Indeed, courts

have recognized that “[c]onsumer surveys have become almost de rigueur in litigation

over genericness.” Berner Int’l Corp. v. Mars Sales Co., 987 F.2d 975, 982–83 (3d Cir.

1993) (internal quotation marks and citation omitted). Accordingly, where, as here, the

district court found that the survey was methodologically sound, the survey is strong

evidence that the public does not understand BOOKING.COM to refer to the proposed

mark’s generic meaning.

      On appeal, the USPTO does not contest the validity of the survey or its

methodology. Instead, it relies on dicta in Hunt Masters to argue that the district court

erred in considering the survey at all. 240 F.3d at 254–55. Its reliance is misplaced; our

reasoning in that case does not apply here. In Hunt Masters, we considered whether the

owners of “the Charleston Crab House,” who sought to enjoin a competitor from using

the name “The Crab House,” had a protected proprietary interest in the term “crab

house.” We declined to find such an interest because we determined that “crab house”

was a generic term referring to a class of restaurants that serve crabs. Id. at 254. In so

determining, we held that the district court did not err in declining to consider the

plaintiff’s consumer survey. We explained that there are two ways in which terms may

be classified as generic--“(1) where the term began life as a ‘coined term’” that had

become generic through common usage, and “(2) where the term was commonly used

prior to its association with the products at issue”--and that while consumer surveys are

                                           17
relevant to determining whether a term is generic in the former scenario, they are not in

the latter. Id. at 254–55. Contrary to the USPTO’s contention, Hunt Masters does not

control where, as here, the district court determined based on the dearth of evidence in

the record that the proposed mark was not commonly used. As such, the proposed mark

does not fall within the category of terms for which survey evidence is irrelevant.

       Weighing the evidence before it, the district court did not err in finding that the

USPTO did not satisfy its burden of showing that BOOKING.COM is generic. It is

axiomatic that determinations regarding the relative weight of evidence are left for the

trier of fact. See In re Hotels.com, 573 F.3d at 1305–06 (finding that the trier of fact, the

TTAB, could reasonably have given controlling weight to dictionary definitions and

similar uses of “hotels” with a .com suffix over a consumer survey with questionable

methodology).     Here, the district court, acting as the trier of fact in reviewing

Booking.com’s trademark application de novo, did not err in placing greater weight on

the consumer survey over other evidence, like dictionary definitions, in assessing the

primary significance to the public. See Mars Sales Co., 987 F.2d at 982–83 (explaining

that direct consumer evidence, e.g., consumer surveys and testimony, “is preferable to

indirect forms of evidence” like dictionaries and trade journals).

       We therefore conclude that the district court did not err in finding that

BOOKING.COM is a descriptive, rather than generic, mark.



                                             ii.



                                             18
       The USPTO nevertheless contends that adding the top-level domain “.com” to a

generic second-level domain like “booking” is necessarily generic, and that the district

court therefore erred in finding that BOOKING.COM was non-generic. The USPTO

advances two theories as reasons for adopting a per se rule against protecting terms like

BOOKING.COM. For the reasons that follow, we decline to adopt such an approach

under either theory.

       First, the USPTO relies on an 1888 Supreme Court case to argue that, as a matter

of law, adding .com to a generic SLD like booking can never be nongeneric.                In

Goodyear’s Rubber Mfg. Co. v. Goodyear Rubber Co., 128 U.S. 598, 602–03 (1888), the

Court held that the addition of commercial indicators such as “Company” to terms that

merely describe classes of goods could not be trademarked, like “Grain Company” or, as

the Dissent provides, “The Grocery Store.”         According to the USPTO, “.com” is

analytically indistinct from “company,” as it is a generic identifier for an entity operating

a commercial website, and therefore its addition to a generic term can never be protected.

However, Goodyear was decided almost sixty years before the Lanham Act and,

crucially, did not apply the primary significance test. No circuit has adopted the bright

line rule for which the USPTO advocates--indeed, sister circuits have found that when

“.com” is added to a generic TLD, the mark may be protectable upon a sufficient

showing of the public’s understanding through consumer surveys or other evidence. See,

e.g., Advertise.com, Inc., 616 F.3d at 982; In re Hotels.com, 573 F.3d at 1304–05. We

similarly decline to do so here.



                                             19
       Second, the USPTO argues that the proposed mark is per se generic because it is

nothing more than the sum of its component parts. It contends that “booking” is a

generic term for hotel reservation services, that “.com” is generic for an online company,

and that when combined the resulting composite is generic for the online booking

services at issue here because a member of the relevant public would understand

BOOKING.COM to name an online booking website. Therefore, the USPTO contends,

BOOKING.COM is generic. We disagree that it is necessarily so.

       We begin by discussing the genericness inquiry as it applies to compound terms.

When confronted with a compound term like PRETZEL CRISPS, courts may consider as

a first step the meaning of each of the term’s component marks; but as we explained in

Hunt Masters, the ultimate inquiry examines what the public primarily perceives the term

as a whole to refer to. 240 F.3d at 254. For example, in determining whether PRETZEL

CRISPS is generic, a court may first determine based on dictionary definitions and other

competent sources that PRETZEL is primarily understood to refer to the genus of

pretzels, and that CRISPS would be understood as primarily referring to crackers. Frito-

Lay N. Am., Inc., 124 U.S.P.Q.2d 1184 at *4, 21. But the court must also consider

evidence--such as use in newspaper articles or food blogs--to determine whether the term

PRETZEL CRISPS is perceived primarily to refer to a crispy pretzel or to a particular

source. Id. at *22.

       Where the proposed mark is a composite that includes .com, we clarify that,

contrary to the district court’s suggestion, .com does not itself have source-identifying



                                           20
significance when added to an SLD like booking. 9 See, e.g., In re Hotels.com, 573 F.3d

at 1304 (explaining that the generic term “hotels” did not lose its generic character by

placement in the domain name HOTELS.COM); McCarthy on Trademarks, § 7:17.50

(explaining that a TLD like .com “has no source indicating significance and cannot serve

any trademark purpose”).      Merely appending .com to an SLD does not render the

resulting domain name non-generic because the inquiry is whether the public primarily

understands the term as a whole to refer to the source or the proffered service. 10

       For the same reason, neither is it the case, as the USPTO would have it, that

assuming booking and .com are each generic terms according to their respective

dictionary definitions, and that together they describe the service provided, this

necessarily ends the genericness inquiry. Within this inquiry, dictionary definitions,

though “relevant and sometimes persuasive” to the genericness inquiry based on the

assumption that such definitions generally reflect the public’s perception of a word’s


       9
          The district court concluded that a TLD like .com generally has source-
identifying significance when added to an SLD like booking, and that a mark composed
of a generic SLD like booking together with a TLD is usually a descriptive mark eligible
for protection upon a showing of secondary meaning. We decline to adopt a rule that
goes so far. Such a rule would effectively make any domain name distinctive, which
oversteps the focus of our trademark jurisprudence on a mark’s primary significance to
the public. However, because we find other evidentiary bases to affirm the district court,
as discussed supra, our rejection of this approach does not alter the outcome of our
inquiry.
       10
         Because we do not adopt the district court’s approach to the addition of TLDs to
SLDs, we need not address the USPTO’s contention that the district court impermissibly
relied on BOOKING.COM’s functional role as a web address to establish non-
genericness, where functional features are precluded from trademark protection.


                                             21
meaning, are not necessarily dispositive or controlling. Retail Servs., Inc., 364 F.3d at

544–45. Instead, where, as here, the court found that the term was not previously

commonly used, it may consider additional evidence like consumer surveys in making its

genericness determination. 11 This is particularly true where the mark involves a domain

name. Unlike general terms such as “crab house,” see Hunt Masters, 240 F.3d at 254–55,

looking to the component parts of a domain name may not unambiguously represent the

primary significance of the term as a whole given that the relevant public may recognize

domain names to indicate specific locations on the internet. See In re Hotels.com, 573

F.3d at 1305 (acknowledging that “consumers may automatically equate a domain name

with a brand name”) (citation omitted). Thus, even where the domain-name-as-mark

technically describes the service provided, it does not necessarily follow that the public

commonly understands the mark to refer to the service broadly speaking.

       We therefore decline to adopt a per se rule and conclude that when “.com” is

combined with an SLD, even a generic SLD, the resulting composite may be non-generic

where evidence demonstrates that the mark’s primary significance to the public as a

whole is the source, not the product.


       11
          As we have discussed, once a term has been deemed generic, consumer
recognition will not save it from being generic. See Retail Servs., Inc., 364 F.3d at 547.
Here, BOOKING.COM was not already deemed generic because it had not been so
determined by a prior court, and the district court expressly found that it was not
commonly used. Accordingly, the USPTO’s reliance on cases where terms like “You
Have Mail” and “Freebies” were found to be commonly used to argue that consumer
recognition cannot render BOOKING.COM non-generic, is misplaced. See America
Online, 243 F.3d at 822 and Retail Services, Inc., 364 F.3d at 547.


                                           22
      This approach comports with that taken by our sister circuits, who have similarly

declined to adopt a per se rule against protecting domain names, even where they are

formed by combining generic terms with TLDs. See, e.g., Advertise.com Inc., 616 F.3d

at 978–79; In re Steelbuilding.com, 415 F.3d 1293, 1299 (Fed. Cir. 2005). These courts

have left open the possibility that in “rare circumstances” a TLD may render a term

sufficiently distinctive to be protected as a trademark. See In re Steelbuilding.com, 415

F.3d at 1299.

      Tellingly, even where courts have found that the individual components of a

domain name mark are independently generic, and that when added together the resulting

composite merely describes the genus of the service provided, courts still considered

other evidence such as consumer surveys in determining whether the mark was generic.

For instance, in determining whether ADVERTISING.COM was generic, the Ninth

Circuit explained that even though both “advertising” and “.com” were generic, and that

ADVERTISING.COM conveyed only the genus of the services offered, it was possible

“that consumer surveys or other evidence might ultimately demonstrate that [the] mark is

valid and protectable.” Advertise.com, Inc., 616 F.3d at 982 (emphasis added); see In re

Hotels.com, 573 F.3d at 1304–05 (considering a consumer survey regarding the public’s

understanding of HOTELS.COM even though it determined that “hotels” and “.com”

were independently generic and that the combination did not produce new meaning).

While these courts have generally found the resulting composite of adding “.com” to




                                           23
certain SLDs to be generic, 12 they have nonetheless acknowledged that on rare occasions

such marks may be non-generic. Here, the district court did not err in determining that

this case presents one such rare occasion where the record evidence supported a finding

that the USPTO failed to meet its burden of proving that the public primarily understood

BOOKING.COM to refer to the genus of online hotel reservation services, rather than the

company or brand itself.

       We are not unsympathetic to the USPTO’s concerns that granting trademark

protection over BOOKING.COM may prevent other companies from using the mark.

See OBX-Stock, Inc., 558 F.3d at 339–40 (noting trademark law’s twin concerns).

However, these concerns are assuaged by two considerations. First, because trademarks

only protect the relevant service--here, the district court granted protection as to hotel

reservation services but not travel agency services--protection over BOOKING.COM

would not necessarily preclude another company from using, for example,

carbooking.com or flightbooking.com. 13 Second, the purported overbreadth of the mark


       12
          See, e.g., In re Hotels.com, 573 F.3d at 1304 (HOTELS.COM); In re
1800Mattress.com IP, LLC, 586 F.3d at 1364 (MATTRESS.COM); In re Reed Elsevier
Props., Inc., 482 F.3d at 1378 (LAWYERS.COM). We note, however, that on appeal
from the TTAB, the Federal Circuit applies a more deferential standard of review--
reviewing factual findings for substantial evidence--than that applied by the district court,
which reviews the TTAB’s decision de novo. See Shammas v. Focarino, 784 F.3d 219,
225 (4th Cir. 2015). Given this deferential standard of review, the Federal Circuit may
affirm a genericness holding where the district court, reviewing the extant evidence and
any new evidence de novo, may have reached a different conclusion.
       13
        As the district court noted, WORKOUT.COM, ENTERTAINMENT.COM, and
WEATHER.COM are registered marks that have not precluded domain names such as
MIRACLEWORKOUT.COM,                WWW.GOLIVE-ENTERTAINMENT.COM,          and
(Continued)
                                             24
can be addressed in proceedings regarding the scope of the trademark’s protection. To

enforce a mark, a plaintiff must prove in a trademark infringement suit that there is a

“likelihood of confusion”--that is, whether “the defendant’s actual practice is likely to

produce confusion in the minds of consumers about the origin of the goods or services in

question.” George & Co., 575 F.3d at 393 (citation omitted); Pizzeria Uno, 747 F.2d at

1527. Infringement plaintiffs often must show “actual confusion.” George & Co., 575

F.3d at 393. Given that domain names are unique by nature and that the public may

understand a domain name as indicating a single site, it may be more difficult for domain

name plaintiffs to demonstrate a likelihood of confusion.

      In sum, adding “.com” to an SLD can result in a non-generic, descriptive mark

upon a showing of primary significance to the relevant public. This is one such case.

Based on the record before it, the district court properly found that the USPTO did not

meet its burden of proving that “booking.com” is generic. We therefore affirm the

court’s finding that BOOKING.COM is descriptive.            Because the USPTO does not

challenge the district court’s finding that BOOKING.COM has acquired secondary

meaning where the mark is deemed descriptive, we affirm the district court’s partial grant

of summary judgment finding that BOOKING.COM is protectable as a trademark.



                                           IV.



CAMPERSWEATHER.COM. Booking.com B.V., 278 F. Supp. 3d at 911 & n.6 (taking
judicial notice of such marks in the public record).


                                           25
       We turn now to Booking.com’s contention that it should not be required to pay the

USPTO’s attorneys fees under 15 U.S.C. § 1071(b)(3).           Under the Lanham Act, a

dissatisfied trademark applicant may seek review of an adverse ruling on his trademark

application either by appealing the USPTO’s ruling to the Federal Circuit, 15 U.S.C.

§ 1071(a)(1), or by commencing a de novo action in a federal district court, id.

§ 1071(b)(1). If the applicant chooses to appeal to the Federal Circuit, the appeal is taken

“on the record” before the USPTO, id. § 1071(a)(4), and the court defers to the USPTO’s

factual findings unless they are unsupported by substantial evidence.          Shammas v.

Focarino, 784 F.3d 219, 225 (4th Cir. 2015). In contrast, if he chooses to appeal in a

district court, the parties may conduct discovery and submit evidence beyond the record

before the USPTO, which the district court reviews de novo as the trier of fact. Id.

Crucially, if the applicant decides to challenge the USPTO’s ruling in the district court,

the applicant must pay “all the expenses of the proceeding . . . whether the final decision

is in favor of such party or not.” 15 U.S.C. § 1071(b)(3) (emphasis added).

       Pursuant to this statute, the district court granted the USPTO’s motion requiring

Booking.com to pay $76,873.61 of its expenses, $51,472.53 of which constituted the

prorated salaries of its attorneys and paralegals who worked on the matter. In reaching

this decision, the district court relied on our precedent in Shammas, which held that “all

the expenses of the proceeding” under §1071(b)(3) includes attorneys fees. Id. at 224.

       In so holding in Shammas, we first concluded that the “American Rule”--the

bedrock principle that each litigant pays his own attorneys fees unless Congress has

specifically and explicitly provided otherwise--was inapplicable to the provision because

                                            26
the rule applies “only where the award of attorneys fees turns on whether a party seeking

fees has prevailed to at least some degree.” 784 F.3d at 223. Accordingly, we interpreted

the phrase “all the expenses of the proceeding” for “its ordinary meaning without regard

to the American Rule,” and concluded that it included attorneys fees. Id. at 224.

       Whether the American Rule applies to § 1071(b)(3), however, has since been

called into question. Relying on our decision in Shammas, the Federal Circuit previously

held that a nearly identical provision of the Patent Act, 35 U.S.C. § 145, included

attorneys fees.   Nantkwest, Inc. v. Matal, 860 F.3d 1352, 1355 (Fed. Cir. 2017).

Subsequently, however, the Federal Circuit reversed its decision en banc, squarely

rejecting our reasoning in Shammas; it now holds that attorneys fees are not covered

under that provision. Nantwest, Inc. v. Iancu, 898 F.3d 1177, 1185 (Fed. Cir. 2018) (en

banc). Moreover, the year after we decided Shammas, the Supreme Court applied the

American Rule to a bankruptcy statute that did not mention a prevailing party. See Baker

Botts L.L.P. v. ASARCO LLC, 135 S. Ct. 2158, 2165 (2015).

       These subsequent developments suggest that the American Rule’s requirement

that Congress “clearly and directly” express an intent to deviate from that rule may apply

to § 1071(b)(3)--a statute that, if read to include attorneys fees, anomalously requires an

appealing party to pay the prorated salaries of government attorneys.

       Nonetheless, Shammas remains the law in this circuit, and as long as we continue

to be bound by that precedent we must affirm the district court’s grant of attorneys fees.




                                            27
                                           V.

      For the foregoing reasons, we affirm the district court’s partial grant of summary

judgment to Booking.com as to the protectability of its trademark applications, and we

affirm the district court’s grant of the USPTO’s motion for expenses.

                                                                             AFFIRMED




                                           28
WYNN, Circuit Judge, concurring in part and dissenting in part:

       This case addresses a problem that Booking.com chose to bring upon itself.

Because trademark law does not protect generic terms, an online business, like

Booking.com, has two options in choosing its domain name. On the one hand, it can

choose to operate under a generic domain 1 that describes the nature of the services it

offers, and thereby attract the wealth of customers who simply search the web for that

service. However, in electing that benefit, the entity accepts a trade-off. It must forego

the ability to exclude competitors from using close variants of its domain name. On the

other hand, the entity can choose to operate under a non-generic domain name—and

thereby potentially limit, at least before it has built consumer awareness of its branding,

the universe of potential customers who will find its business. Trademark law affords an

entity that selects this latter option a special benefit. It can bar competitors from trading

on any goodwill and recognition it generates in its domain name.

       Booking.com chose the former approach—to operate under a generic domain

name and forego the ability to exclude competitors from using close variants of its

domain name. But in the face of recognizing that “booking” is a generic term, the district


       1
         A domain name, the string of text used to look up the internet protocol address
for a particular internet site, is made up of a Top Level Domain and a Secondary Level
Domain. The Top Level Domain is the final portion of the web address—such as “.com,”
“.gov,” or “.edu”—that signifies the category of website: i.e. commercial, government, or
educational. The Secondary Level Domain is the preceding part of the web address.
Well-known Secondary Level Domains include “facebook,” “amazon” and “google.”
Thus, in the domain name http://www.booking.com, “.com” is the Top Level Domain,
whereas “booking” is the Secondary Level Domain.


                                             29
court creatively decided that combining the generic term “booking” with the generic top-

level domain “.com” rendered it non-generic. In doing so, the district court’s judgment—

which the majority opinion concedes was grounded in legal error, but nonetheless

declines to set aside—allows Booking.com to have its cake and eat it too. Booking.com

gets to operate under a domain that merely describes the nature of its business and

exclude its competitors from doing the same.

       Booking.com maintains that such a result is warranted to prevent “unscrupulous

competitors [from] prey[ing] on its millions of loyal consumers,” Appellee’s Br. at 38.

But to the extent Booking.com fears that its competitors are using the terms “booking”

and “.com” in ways that might confuse its customers, “this is the peril of attempting to

build a brand around a generic term.” Advertise.com, Inc. v. AOL Advert., Inc., 616 F.3d

974, 980 n.6 (9th Cir. 2010). Accordingly, although I agree with much of the analysis in

the majority opinion, 2 I part ways with my colleagues’ decision to nevertheless affirm the

district court’s judgment that BOOKING.COM is a protectable trademark.


       2
         I agree with much of the analysis in the majority opinion. The majority opinion
is correct that in determining whether a proposed trademark is a generic term not subject
to protection, courts must “look to the proposed mark as a whole.” Ante at 12, 20
(emphasis retained). Accordingly, I join my colleagues and our sister circuits in
declining “to adopt a per se rule against protecting domain names, even where they are
formed by combining generic terms with [Top Level Domains].” Ante at 23. Also like
my colleagues, I believe that on only “rare occasion[s]” should the combination of a
generic Secondary Level Domain and a Top Level Domain result in a protectable
trademark. Ante at 24 (emphasis added). And like my colleagues, I conclude the district
court committed legal error in holding that “a [Top Level Domain] like .com generally
has source-identifying significance when added to a[] [Secondary Level Domain] like
booking, and that a mark composed of a generic [Secondary Level Domain] like booking
together with a [Top Level Domain] is usually a descriptive mark eligible for protection
(Continued)
                                            30
       That decision rests upon my colleagues’ determination that the district court’s

factual findings pertaining to genericness should be “accorded great deference,” Ante at

13, regarding whether a proposed mark is generic—i.e., whether a proposed mark is

nothing more than the “common name of a product or service itself,” Sara Lee Corp. v.

Kayser-Roth Corp., 81 F.3d 455, 464 (4th Cir. 1996)—which is a question of fact

generally subject to clear error review, see Swatch AG v. Beehive Wholesale, LLC, 793

F.3d 150, 155 (4th Cir. 2015). But “we owe no deference to the district court’s findings

if they are derived as a result of the court’s misapplication of the law.” Sara Lee, 81 F.3d

at 464 (citation omitted); Pizzeria Uno Corp. v. Temple, 747 F.2d 1522, 1526 (4th Cir.

1984) (“[T]he clearly erroneous rule [will not] protect findings which have been made on

the basis of the application of incorrect legal standards or made in disregard of applicable

legal standards, such as burden of proof” (citations omitted)). When a finding derives

from a district court’s “application of an improper standard to the facts, it may be

corrected as a matter of law.” United States v. Singer Mfg. Co., 374 U.S. 174, 194 n.9

(1963). In such cases, the clearly erroneous standard is no longer applicable. See United

States v. Rodriguez-Morales, 929 F.2d 780, 783 (1st Cir. 1991) (“Of course, if the lower




upon a showing of secondary meaning.” Ante at 21 n.9. I also join my colleagues in the
portion of the majority opinion affirming the district court’s granting of attorneys’ fees to
the U.S. Patent & Trademark Office (“PTO”). Ante at 27. In particular, I agree that
Shammas v. Focarino, 784 F.3d 219 (4th Cir. 2015), remains the controlling precedent in
this circuit.



                                             31
court applies the wrong legal standard, no deference attaches, and we must proceed to

correct the error.”).

       Here, the district court rendered the legal “conclu[sion]” that “when combined

with a[] [Secondary Level Domain], a [Top Level Domain] generally has source

identifying significance and the combination of a generic [Secondary Level Domain] and

a [Top Level Domain] is generally a descriptive mark that is protectable upon a showing

of acquired distinctiveness.” Booking.com B.V. v. Matal, 278 F. Supp. 3d 891, 909 (E.D.

Va. 2017). Put differently, the district court concluded that, as a matter of law, “the

combination of a generic [Secondary Level Domain] and a [Top Level Domain]” is

presumptively descriptive and protectable upon a showing of acquired distinctiveness. Id.

       Notably, in adopting this presumption, the district court expressly rejected the

approach taken by the Federal Circuit in cases, like the instant case, involving a proposed

trademark that combines a generic Secondary Level Domain with a Top Level Domain.

See id. at 908–10. The majority opinion rejects that legal presumption but nevertheless

defers to the district court’s factual finding that BOOKING.COM is descriptive, and

therefore protectable, on the theory that that finding was not tainted by the district court’s

legal error. See Ante at 21 n.9. But a close examination of the district court’s opinion

reveals that the district court’s legal error did play a role in the court’s ultimate

determination that BOOKING.COM is descriptive.

       In particular, because the district court presumed that “the combination of a

generic [Secondary Level Domain] and a [Top Level Domain]” is descriptive,

Booking.com, 278 F. Supp. 3d at 909, it subjected the registrant to a less onerous

                                             32
evidentiary burden for establishing descriptiveness than the law demands. This is evident

for two reasons.

       First, the district court’s ultimate determination—that the proposed mark

BOOKING.COM is descriptive—conflicts with the determination that every other court

has reached in cases, like the instant case, involving the registration or enforcement of a

proposed mark composed of a generic Secondary Level Domain and a Top Level

Domain. 3 For instance, the Federal Circuit found that the generic term “hotels” “did not

lose its generic character by placement in the domain name HOTELS.COM.” In re

Hotels.com, 573 F.3d 1300, 1304 (Fed. Cir. 2009).              Instead, consumers would

“immediately understand that HOTELS.COM identifies a website” that provides


       3
         The district court found—and I agree—that “by itself, the word ‘booking’ is
generic for the classes of hotel and travel reservation services recited in plaintiff’s
applications.” Booking.com, 278 F. Supp. 3d at 905. Likewise, courts and commentators
have long stated that a Top Level Domain is not protectable. For instance, the PTO has
long stated that Top Level Domains “generally serve no source-identifying function.”
TMEP § 1209.03(m) (5th ed. 2007). This position has been consistently held in federal
courts. See Advertise.com, 616 F.3d at 978 (finding that a Top Level Domain merely
reflects an online commercial organization). Additionally, the leading treatise on
trademark law has stated that a Top Level Domain has no ability to distinguish one
source from another. 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair
Competition, § 7:17.50 (5th ed. 2018) (“The ‘.com’ portion of the domain name has no
trademark significance and is essentially the generic locator for all names in that top level
domain.”). In this way, a Top Level Domain is similar to other common web address
components, such as “http://www.” and “.html.” Id. Because all websites must contain
some form of Top Level Domain, such as “.com” or “.gov.,” there is no unique source-
identifying information. Similarly, in trademark infringement analyses, Top Level
Domains have long been considered irrelevant to the strength of one’s mark, as they only
demonstrate, inter alia, a website’s commercial, governmental, or organizational nature.
See Brookfield Commc’ns, Inc. v. W. Coast Entm’t Corp., 174 F.3d 1036, 1055 (9th Cir.
1999) (refusing to consider the “.com” portion of the web address when comparing marks
in a case of potential infringement).

                                             33
“information about hotels or making reservations at hotels.” Id. The Federal Circuit also

affirmed the finding of the Trademark Trial and Appeal Board (the “Trademark Board”)

that many other websites that used the word “hotels” in their domain names, such as “all-

hotels.com” and “web-hotels.com,” demonstrated “a competitive need for others to use

[the term] as part of their own domain names.” Id.

         Likewise, in In re Reed Elsevier Properties, the Federal Circuit found it to be

“abundantly clear” that the proposed mark in question, “LAWYERS.COM,” was generic

because “the relevant public would readily understand the term to identify a commercial

web site providing access to and information about lawyers.” 482 F.3d 1376, 1379–80

(Fed. Cir. 2007) (internal quotation marks omitted).

         Similarly, in In re 1800Mattress.com IP, LLC, the Federal Circuit affirmed the

Trademark Board’s decision that the proposed mark MATTRESS.COM was generic

because customers would naturally recognize the mark as referring to a commercial

website providing retail services featuring mattresses. 586 F.3d 1359, 1364 (Fed. Cir.

2009).      Notably, the Federal Circuit rejected the applicant’s argument—which

Booking.com also advances in this case and on which the district court relied, see

Booking.com, 278 F. Supp.3d at 914—that the term could not be generic because

consumers did not refer to the stores as “mattresses.com[s],” id. (quoting In re

1800Mattress.com IP, LLC, 586 F.3d at 1362). Instead, the court agreed with the

Trademark Board that the relevant public would understand MATTRESS.COM to be “no

more than the sum of its constituent parts”—an online provider of mattresses. Id. at

1363.

                                            34
       Like the Federal Circuit, the Ninth Circuit has found that a generic Secondary

Level Domain combined with a Top Level Domain does not generally amount to a

protectable mark. In Advertise.com, the court considered whether AOL’s claimed mark

ADVERTISING.COM was protectable. 616 F.3d at 977. The district court below

enjoined Advertise.com, a putative competitor of AOL’s Advertising.com, from using its

trade name or any other name confusingly similar to ADVERTISING.COM, concluding

that AOL would likely succeed on its claim that the standard text mark

ADVERTISING.COM was descriptive. Id. The Ninth Circuit held that the district court

abused its discretion in entering the injunction because—like in the instant case—the

district court applied an incorrect legal standard in determining whether a mark composed

of a generic Secondary Level Domain and Top Level Domain is enforceable. Id. at 982.

Engaging in its own analysis under the appropriate legal standard, the court held that

AOL was unlikely to succeed on the merits because “ADVERTISING.COM still conveys

only the generic nature of the services offered.” Id. at 981–82.

       Lower     courts   have    followed        Hotels.com,   Reed-Elsevier   Properties,

1800Mattress.com, and Advertising.com and refused to award trademark significance to

proposed marks, like BOOKING.COM, combining a generic Secondary Level Domain

with a Top Level Domain. See, e.g., Borescopes R U.S. v. 1800Endoscope.com, LLC,

728 F. Supp. 2d 938, 952 (M.D. Tenn. 2010) (finding that the use of the term

“borescopes” in companies’ domain names “generically describes the class of product

each sells”); Image Online Design, Inc. v. Core Ass’n, 120 F. Supp. 2d 870, 878 (C.D.

Cal. 2000) (noting that “a [Top Level Domain] and other non-distinctive modifiers of a

                                             35
URL like ‘http://www’ have no trademark significance”); In Re Eddie Zs Blinds &

Drapery, Inc., 74 U.S.P.Q.2d 1037 at *6 (T.T.A.B. 2005) (determining that

BLINDSANDDRAPERY.COM was not one of the “exceptional circumstances” that

should forestall a finding of genericness); In Re Martin Container, Inc., 65 U.S.P.Q.2d

1058 at *5 (T.T.A.B. 2002), appeal dismissed, 56 Fed. App’x. 491 (Fed. Cir. 2003)

(finding CONTAINER.COM generic because the combination of “container” and a Top

Level Domain “does not result in a compound term that has somehow acquired” the

ability to function as an indication of source).

       A second indication that the district court’s incorrect legal framework tainted its

ultimate determination that BOOKING.COM is protectable is that BOOKING.COM is

not like the types of marks courts have recognized as among the “rare” occasions when

adding a generic Secondary Level Domain to a Top Level Domain does not create a

generic mark. Because Top Level Domains generally convey only that a business is web-

based, it is “only in rare circumstances” that the combination of a generic Secondary

Level Domain, on its own incapable of source identification, and “.com” will produce a

composite mark that “expand[s] the meaning of the mark.” See, e.g., Advertise.com, 616

F.3d at 979 (quoting In re Steelbuilding.com, 415 F.3d 1293, 1299 (Fed. Cir. 2005)).

       As an example of the “rare circumstance” in which a Top Level Domain could

provide additional non-functional information, the Federal Circuit considered the

possibility of a brick-and-mortar company that sold tennis equipment and operated under

the name “tennis.net.” In re Oppendahl & Larson, LLP, 373 F.3d 1171, 1175 (Fed. Cir.

2004). The court noted the “witty double entendre related to tennis nets” created by the

                                              36
combination of “tennis” and “.net” rendered such a usage distinguishable from a standard

proposed mark combining a generic Secondary Level Domain with a Top Level Domain.

Id.

       Following Oppendahl’s reasoning, if we were presented with a situation in which

the “.com” was used in a way that played upon or expanded the meaning of its ordinary

use as a Top Level Domain, registration might be appropriate. For instance, a website

cataloguing and discussing romantic comedy movies of the 1980s, 1990s, and 2000s

called “rom.com” might expand upon the ordinary meaning of the Top Level Domain, as

it would both describe the commercial nature of the website, as well as convey the

subject matter of the website. 4

       The tennis.net and rom.com examples are readily distinguishable from the instant

case. The district court did not find—nor has Booking.com ever argued—that the

combination of “booking”—a generic term—and “.com” amounts to a “witty double

entendre” that expands the ordinary meanings of the proposed mark’s component parts.

Rather, BOOKING.COM is a run-of-the-mill combination of a generic term with a Top

Level Domain that creates a composite mark concerning the subject or business


       4
         “Rom com” is a common abbreviation for the “romantic comedy” genre of
movies, whose plots revolve around the humorous developments and lighthearted
tensions that occur in a romantic couple’s bourgeoning relationship, while typically
culminating in a happy ending. See https://www.merriam-webster.com/dictionary/rom-
com. Although rom.com differs from tennis.net in that the Secondary Level Domain
arguably is not a generic term, as “rom” is a shorthand reference for romantic, the domain
name rom (dot) com is, as a composite term, both a generic descriptor and a “witty” play
on that descriptor.


                                           37
encompassed by the generic term—precisely the type of mark that the courts in

Hotels.com, Reed Elsevier Properties, 1800Mattress.com, and Advertise.com found did

not amount to the “rare circumstance” that warranted affording the domain name

trademark protection.

       BOOKING.COM’s mark differs substantially from the types of proposed marks

fitting into the “rare circumstances” in which a generic Secondary Level Domain and a

Top Level Domain are protectable.        This provides further evidence that the district

court’s incorrect legal test tainted its ultimate factual determination. Because the district

court erroneously believed that marks combining a generic Secondary Level Domain and

Top Level Domain are presumptively protectable, it never examined—as it should

have—whether BOOKING.COM amounted to one of the “rare circumstances” when

such marks are protectable.

       The district court’s incorrect legal test—the application of which my colleagues

leave in place—upsets the careful balance the law has struck between assisting

consumers to identify the source of goods and preserving the linguistic commons.

Presumptively allowing protection of domain names composed of a generic Secondary

Level Domain and Top Level Domain conflicts with the law’s longstanding refusal to

permit registration of generic terms as trademarks.

       Fundamentally, the proscription against allowing generic terms to be trademarked

stems from considerations regarding the monopolization of language. To permit generic

terms to be trademarked “would grant the owner of the mark a monopoly, since a

competitor could not describe his goods as what they are.” CES Publ’g Corp. v. St. Regis

                                             38
Publ’ns, Inc., 531 F.2d 11, 13 (2d Cir. 1975). This Court has long sought to foreclose

such a result, holding that no single competitor has the right to “corner the market” on

ordinary words and phrases, thereby enclosing the “public linguistic commons.” Am.

Online, Inc. v. AT&T Corp., 243 F.3d 812, 821 (4th Cir. 2001); see, e.g., Ashley

Furniture Indus. v. Sangiacomo N.A., 187 F.3d 363, 369 (4th Cir. 1999) (noting that the

trade name “Pet Store” for a shop that sold pets would be generic).

       Importantly, the law forbids trademarking generic terms, even when a putative

mark holder engages in successful efforts to establish consumer recognition of an

otherwise generic term. “[N]o matter how much money and effort the user of a generic

term has poured into promoting the sale of its merchandise and what success it has

achieved in securing public identification, 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 (2d Cir. 1976) (emphasis added). Therefore, even

advertising, repeated use, and consumer association will not warrant affording trademark

protection to a generic term. See Am. Online, 243 F.3d at 821 (“[T]he repeated use of

ordinary words . . . cannot give [a single company] a proprietary right over those words,

even if an association develops between the words and [that company].”); see also

Surgicenters of Am., Inc. v. Med. Dental Surgeries, Co., 601 F.2d 1011, 1017 (9th Cir.

1979) (finding that even if a generic term becomes identified with a first user, trademark

protection will not be available in the generic term).

       The policy considerations underlying trademark law’s refusal to protect generic

terms apply regardless of whether the putative mark holder is a traditional brick-and-

                                             39
mortar business or located in cyberspace. As the PTO argues, a grocery business called

The Grocery Store would—and should—never receive trademark protection because the

name is generic—regardless of whether consumers associated the name with a particular

entity. However, under the district court’s erroneous approach—the consequences of

which the majority leaves in place—if enough consumers recognized an online grocery

business called “grocerystore.com,” that business would be entitled to trademark

protection. There is no basis in law or policy for drawing such a distinction. Just as

competing brick-and-mortar grocery stores need to make use of the term “grocery” to

inform customers of the nature of their businesses, so too do competing internet grocery

providers need to make use of the term “grocery” in their domain names.

      The district court’s treatment of marks combining generic Secondary Level

Domains and Top Level Domains as presumptively protectable also conflicts with

precedent foreclosing protection of marks that combine a generic term with a generic

commercial designation (e.g., “Company,” “Corp.,” or “Inc.”). More than a hundred

years ago, the Supreme Court held that the addition of commercial designations like these

does not transform otherwise generic terms into protectable marks. See Goodyear’s India

Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U.S. 598, 602–03 (1888).

      Under Goodyear’s, a brick-and-mortar reservation service operating under the

term The Booking Company would not be able to receive a trademark in that name,

regardless of the degree of brand recognition it generated or the number of consumers

who identified it as a brand. See Am. Online, 243 F.3d at 821; Abercrombie, 537 F.2d at

9. Yet, under the district court’s approach, the term BOOKING.COM is presumptively

                                           40
protectable. Compare Advertise.com, 616 F.3d at 982 (“That ‘.com,’ when added to a

generic term, ‘indicates a commercial entity’ does not suffice to establish that the

composite is distinctive, much as AOL would not have created a protectable mark by

adopting the designation ‘Advertising Company.’”).

       The district court concluded that “Goodyear’s reasoning regarding corporate

designators does not apply with equal force to domain names” because “adding a [Top

Level Domain] such as ‘.com’ to a generic [Secondary Level Domain] does more than

indicate that a company offers services via the internet; it indicates a unique domain

name that can only be owned by one entity.” Booking.com, 278 F. Supp. 3d at 910. But

as the Federal Circuit has explained, “[a]lthough not a perfect analogy, the comparison of

[Top Level Domains] (i.e., ‘.com,’ ‘.org,’ etc.) to entity designations such as ‘Corp.’ and

‘Inc.’ has merit.” Oppedahl, 373 F.3d at 1175. “The commercial impression created by

‘.com’ is similar to the impression created by ‘Corp.’ and ‘Co.’, that is, the association of

a commercial entity with the mark.” Id.

       Additionally, the difference between an entity designation such as “Corp.” and a

Top Level Domain recognized by the district court is attributable to the functional nature

of the internet. Although most Top Level Domains do suggest a relationship with the

internet, a domain name “serves the purely technological function of locating a Web site

in cyberspace.” McCarthy on Trademarks, § 7:17.50. Functional features, however,

cannot be the basis for trademark protection: “[E]ven if a functional feature has achieved

consumer recognition (secondary meaning) of that feature as an indication of origin, the

feature cannot serve as a legally protectable symbol.” Am. Online, Inc., 243 F.3d at 822–

                                             41
23. Yet that is precisely what the district court’s legal test—the application of which my

colleagues in the majority leave in place—does.

       It is particularly important that we ensure that the district court’s ultimate finding

that BOOKING.COM is descriptive, and therefore protectable, was not tainted by its

erroneous legal test because, as the PTO argues, trademark registration will provide

Booking.com with a weapon to freeze out potential competitors. As explained above,

trademark law’s proscription on the registration of generic terms prevents firms from

monopolizing language and allows competitors to “describe [their] goods as what they

are.” CES Publ’g, 531 F.2d at 13.

       I believe that this Court’s affirmance of the district court’s judgment—even as it

rejects the district court’s legal analysis—unjustifiably empowers Booking.com to

monopolize language, thereby enclosing the linguistic commons and adversely affecting

competitors in precisely the manner that trademark law seeks to forestall. Put simply, the

majority opinion’s judgment will directly disadvantage Booking.com’s competitors by

taking away their ability to use the term “booking” in their own website domain names.

Indeed, any competitors that attempt to use the term “booking” will face the risk of a

costly, protracted, and uncertain infringement lawsuit.

       Booking.com and the majority opinion assert that the potential harm to

competitors—and therefore consumers—is minimal because: (1) the doctrine of

descriptive fair use will prevent Booking.com from monopolizing the term; (2) the

protection of BOOKING.COM extends only to hotel reservations, not to other



                                             42
reservation services; and (3) domain names are unique. I find none of these assertions

persuasive.

       Descriptive fair use is an affirmative defense that allows a competitor to use words

contained in a trademark in their ordinary sense to describe the competitor’s own goods

or services to consumers. See KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc.,

543 U.S. 111, 121–22 (2004). According to Booking.com, affording BOOKING.COM

trademark protection will not adversely affect competition by depriving putative

competitors from describing the nature of their business because such protection “will

have no effect on competitors’ right to make descriptive fair use of the word

‘Booking.com.’” Appellee’s Br. at 38. The district court agreed, noting that even if

Booking.com were to successfully assert a prima facie case of trademark infringement by

showing a likelihood of confusion between BOOKING.COM and a competitor’s domain,

the competitor could make use of the descriptive fair use doctrine to avoid liability.

       For several reasons, I fear that the doctrine of descriptive fair use will provide

Booking.com’s competitors cold comfort. I am not convinced that the descriptive fair

use defense will provide significant protection to competitors using the term “booking” in

their own domain names. As the Ninth Circuit has explained, “granting trademark rights

over a domain name composed of a generic term and a [Top Level Domain] grants the

trademark holder rights over far more intellectual property than the domain name itself.”

Advertise.com, 616 F.3d at 980. Such trademark protection “would potentially reach

almost any use of the generic term in a domain name.” Id. at 981 (noting that any one of

the thirty-two other domain names containing some form of the word “advertise” would

                                             43
be placed at risk of a lawsuit). Thus, notwithstanding the doctrine of descriptive fair use,

a firm that obtains a trademark in a domain name that describes the service the firm

provides, like Booking.com, may have the power “to foreclose competitors from using a

vast array of simple, easy to remember domain names and designations that describe

[such] services.” Id.

       Additionally, descriptive fair use is an affirmative defense, not an immunity from

suit. Any online reservation business that chooses to include “booking” in its domain

name will face the risk of defending an expensive infringement lawsuit. As a result,

commercial competitors seeking to avoid litigation risk and expenses—even if they might

ultimately prevail on descriptive fair use grounds—will be chilled from using the term.

       My colleagues in the majority also emphasize that the district court awarded

Booking.com protection for the mark only for Class 43 hotel services, not Class 39 travel

agency services, meaning that “protection over BOOKING.COM would not necessarily

preclude   another      company   from    using,    for   example,    carbooking.com      or

flightbooking.com.” Ante at 24 (emphasis added). But even assuming my colleagues’

optimism that Booking.com could not preclude competitors from using domain names

containing the word “booking” is well-founded—a decidedly uncertain question, see

Advertise.com, 616 F.3d at 980–81—I see no reason why Booking.com should be entitled

to monopolize the generic term “booking” in the online hotel reservation industry by

precluding competitors from using domain names like hotelbooking.com or




                                            44
ehotelbooking.com, 5 which likewise describe such competitors’ services “as what they

are.” CES Publ’g, 531 F.2d at 13. Put simply, there is no reason why monopolization of

language should be allowed in the internet domain name context for any class of services

when trademark law has consistently maintained that generic terms such as “booking”

should be available in the public linguistic commons for all competitors to use.

       Finally, my colleagues in the majority seek to assuage concerns that granting

trademark protection over BOOKING.COM will prevent other companies from using

variants of the mark by emphasizing that, to enforce the mark, Booking.com will have to

prove that there is a “likelihood of confusion” with the allegedly infringing mark. Ante at

25. According to the majority, “[g]iven that domain names are unique by nature and that

the public may understand a domain name as indicating a single site, it may be more

difficult for domain name plaintiffs to demonstrate a likelihood of confusion.” Id. Even

accepting my colleagues’ assumption that Booking.com will have difficulty proving

likelihood of confusion—again, an uncertain question—affording protection to

BOOKING.COM would still likely chill competition in the online booking space. Put

simply, putative competitors may—and likely will—choose not to operate under domain

names that include the word “booking”—even if that term best describes the service they




       5
        Several hotel booking websites have domain names combining, in various ways,
“booking”    with     “.com,”   including    “bookingcenter.com,”   “ebookers.com,”
“bookingwhiz.com,” “hotelbooking.com,” “bookit.com,” and “bookingbuddy.com.” J.A.
337–39.


                                            45
offer—because they do not want to incur the expense and risk of defending an

infringement action.

       In sum, the district court’s opinion reveals that its incorrect understanding of the

governing legal framework likely tainted its finding that BOOKING.COM is distinctive,

and therefore protectable. Because the district court’s erroneous legal test factored into

its ultimate factual determination as to descriptiveness, I cannot concur in my colleagues’

decision to affirm the district court’s judgment. Accordingly, with great respect for my

good colleagues in the majority, I dissent.




                                              46
