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The Addition of “.com” to a Generic Term Could Make a Trademark Protectable

7/2/2020

On June 30, 2020, the Supreme Court ruled that Booking.com is a protectable trademark. U.S. Patent and Trademark Office v. Booking.com B.V., No. 19-46 (June 30, 2020).

Respondent Booking.com B.V. (“Booking.com”) applied for trademark registration of numerous marks containing Booking.com. The applications were refused registration based on the ground that BOOKING.COM is generic and, in the alternative, that it is merely descriptive and has not shown acquired distinctiveness. The decision was appealed to the Trademark Trial and Appeal Board (TTAB), which affirmed the refusal to register.

Booking.com then appealed this case to the U.S. District Court for the Eastern District of Virginia, where Booking.com entered additional evidence in the form of a consumer survey that revealed that the majority of respondents viewed BOOKING.COM as a brand name. The District Court held that the mark is descriptive and eligible for protection among a showing of secondary meaning.

Petitioner U.S. Patent and Trademark Office (USPTO) appealed the District Court decision to the U.S. Court of Appeals for the Fourth Circuit. The Fourth Circuit noted that while adding “.com” to a generic term would not always make a mark descriptive, in this case, BOOKING.COM was found to be not generic since the evidence showed that the mark’s primary significance to the public as a whole is the source, and not the product.

This case was then further appealed to the Supreme Court, and by a vote of 8 to 1, the Court, affirming the decision of the Fourth Circuit, found that a “‘generic.com’ [term] is a generic name for a class of goods or services only if the term has that meaning to consumers.” To be generic, BOOKING.COM would have to signify to consumers the class of online hotel-reservation services. Since consumers do not understand these services to be a “Booking.com,” the term is not generic.

In addressing the USPTO’s arguments, the Court rejected the USPTO’s argument for a nearly per se rule that a generic term with a generic top-level domain (such as “.com”) is always generic absent exceptional circumstances. The Court found that since only one entity can occupy a particular domain name at a time, the addition of “.com” to a generic term is not equivalent to the addition of “Company,” which is contrary to the USPTO’s argument. Instead, a domain name can be source-identifying since a consumer may understand a domain name to refer to a particular website. The USPTO’s other concerns that allowing BOOKING.COM to be protected would hinder competitors were also dismissed, with the Court noting that any concerns would be the same for any other descriptive mark and trademark law already addresses these types of concerns by limiting the scope of these marks. A descriptive mark is a weaker mark so there is a lower likelihood for consumer confusion since “consumers are less likely to think that other uses of the common element emanate from the mark’s owner.”

 While the Court declined to adopt a per se rule that the addition of “.com” to a generic term is always generic, it does not mean that such a term is automatically nongeneric either. Instead, as a result of this case, the USPTO would need to view each mark on a case-by-case basis to determine what the term means to consumers to determine whether it is generic.