Supreme Court Corner

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

TRADEMARK – Decided: June 30, 2020

Holding: 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.  In this decision, the Court found that the term Booking.com is not generic and is therefore eligible for federal trademark registration.

For classifying certain terms for trademark protectability, the Supreme Court has identified five categories of terms, among them “generic” and “descriptive.” A “generic” term identifies the product or service itself, or its general nature, or refers to the genus of which the particular product is a species. Generic terms are generally not registrable. A “descriptive” term identifies the characteristics of a good or service or its function, size, or purpose. Descriptive terms may be protected if the applicant can show the term has acquired “secondary meaning”: consumers identify the mark as distinctive.

Booking.com sought registration of “Booking.com” in connection with its online hotel reservation services. The USPTO and, on appeal, the Trademark Trial and Appeal Board (TTAB) concluded the term Booking.com is generic. The district court reversed, observing that while the term “booking” is generic, the combination with “.com” is a descriptive mark eligible for protection if the applicant can show secondary meaning. Because the applicant produced a survey showing 74.8 percent of surveyed customers identified Booking.com as a brand name, the district court found the marks registrable, and the Fourth Circuit Court of Appeals affirmed.

In an 8-1 decision delivered by Justice Ruth Bader Ginsburg, the Supreme Court affirmed the Fourth Circuit’s decision.  The Court started from several uncontested guiding principles, including that “for a compound term, the distinctiveness inquiry trains on the term’s meaning as a whole, not its parts in isolation” and “the relevant meaning of a term is its meaning to consumers.”  Thus, in view of the survey evidence below, since “Booking.com” taken as a whole “is not a generic name to consumers, it is not generic.”  In dissent, Justice Breyer advocated that adding a top-level domain, such as “.com,” “ordinarily yields no meaning beyond that of its constituent parts,” and thus “generic.com” should not ordinarily be registrable notwithstanding survey evidence to the contrary.

Commentators suggest this ruling will result in an increase in trademark registration filings for “generic.com” marks.  But mark registrants and practitioners should keep in mind the burden to demonstrate registrability of a “generic.com,” including potentially expensive consumer surveys and other extrinsic evidence, and the need for a comprehensive strategy to ensure the mark gains secondary meaning with consumers.

American Axle & Manufacturing Inc. v. Neapco Holdings LLC et al.

PATENT - Cert. Petition Anticipated, deadline Dec. 28, 2020

Issue: Whether the Federal Circuit improperly narrowed the subject matter eligible for patent protection in conflict with O’Reilly v. Morse, 56 U.S. 62 (1853).

Patent law recognizes three firmly rooted judicial exceptions to the scope of subject matter that may be patented. Specifically, patents may not claim “abstract ideas,” “laws of nature,” or “natural phenomenon” standing alone, because those form “the basic tools of scientific and technological work.” However, patents which are directed to those three exceptions may still be eligible for patenting if they also include an “inventive concept” that transforms the claims into “patent-eligible applications” of those exceptions.

Patentholder American Axle sued respondent Neapco for patent infringement of U.S. Patent No. 7,774,911 (the ’911 Patent). The ’911 Patent “generally relates to a method for manufacturing driveline propeller shafts” that are used in automobiles. Specifically, it claims methods of dampening noise-causing vibrations that occur in the ordinary course of driving.

Respondent Neapco challenged the claims of the ’911 Patent as ineligible for patenting. Neapco asserted that the ’911 Patent claimed methods for dampening vibrations that require no more than the application of a natural law – Hooke’s law – which “describes the relationship between an object’s mass, its stiffness, and the frequency at which the object vibrates.” American Axle acknowledged that the ’911 Patent relies in part upon Hooke’s law, but responded that the patented claims are not reducible to that natural law. Instead, in American Axle’s view, the ’911 Patent is an eligible “application” of Hooke’s law.

Both the trial court in the District of Delaware and the United States Circuit Court for the Federal Circuit agreed with Neapco and found the challenged claims of the ’911 Patent to be ineligible for patenting. In a 2-1 split decision, the original panel of the Federal Circuit found all challenged claims of the ’911 Patent to be directed to Hooke’s law. The majority reasoned that the ’911 Patent claimed only a result – the use of Hooke’s law to dampen driveshaft vibrations – and not “the particular process by which the result is accomplished.” Judge Moore dissented, asserting that the majority had improperly expanded law of patent ineligibility.

The Federal Circuit denied American Axle’s petition for en banc rehearing in a 6-6 split decision, spawning four separate dissents and two concurrences. However, in a contemporaneous order filed with the denial of en banc rehearing, the original panel granted rehearing, withdrew its prior opinion, and issued an opinion largely mirroring the original, with one exception: it determined that one of the challenged independent claims may be patent eligible, remanding to the district court for further proceedings. Judge Stoll dissented because the majority would “place in doubt the patent eligibility of historically eligible mechanical inventions.” Judge O’Malley’s dissent construed the dispute as factual in nature, not a legal question decided in the first instance by the Court of Appeals. Judge Newman’s dissent expressed concern that a narrow view of patent eligibility would harm scientific progress and industry in the United States. In an opposed motion to stay the Federal Circuit’s mandate, American Axle informed the Federal Circuit of its intent to file a petition for writ of certiorari to the United States Supreme Court.