Generic Word Plus .Com May Be Trademarked Thanks to Booking.com

(July 1, 2020) A generic name combined with “.com” may be trademarked, the United States Supreme Court says, rejecting the U.S. Patent and Trademark Office (“PTO”) broad rule that combining a generic term with “.com” cannot be registered as a trademark.

“Booking.com” sought to trademark the name of its website name, which is an online site for booking hotel reservations. The PTO denied registration, finding the term ineligible for federal trademark registration because “booking” is a generic term for hotel-reservation services and adding the term “.com” falls under the PTO’s rule that the combination of a generic word and “.com” is generic and therefore not eligible for trademark registration.

In determining whether a word or phrase may be registered as a trademark, the PTO looks to see if the mark can be used to distinguish the applicant’s goods or services from the goods and services of others. Distinctiveness is expressed on a scale from generic to suggestive, to arbitrary or fanciful. The more distinctive the mark, the more readily it qualifies for registration. Generally, generic marks cannot be registered.

Writing for the majority, Justice Ginsburg rejected “the PTO’s sweeping rule. A term styled ‘generic.com’ is a generic name for a class of goods or services only if the term has that meaning to consumers. Consumers, according to lower court determinations uncontested here by the PTO, do not perceive the term ‘Booking.com’ to signify online hotel-reservation services as a class. In circumstances like those this case presents, a ‘generic.com’ term is not generic and can be eligible for federal trademark registration.”

Whether booking.com is generic “turns on whether that term, taken as a whole, signifies to consumers the class of online hotel-reservation services. Thus, if ‘Booking.com’ were generic, we might expect consumers to understand Travelocity—another such services—to be a ‘Booking.com.’  We might similarly expect that a consumer, searching for a trusted source of online hotel-reservation services, could ask a frequent traveler to name her favorite ‘Booking.com’ provider.”

Booking.com provided the trial court with a consumer survey that found participants primarily understood booking.com to refer to booking at the booking.com website.

The majority said it was not embracing a rule automatically classifying “generic.com” terms as nongeneric. “Whether any given ‘generic.com’ term is generic, we hold, depends on whether consumers in fact perceive that term as the name of a class or, instead, as a term capable of distinguishing among members of the class.”

Justice Breyer dissented. “In my view, appending ‘.com’ to a generic term ordinarily yields no meaning beyond that of its constituent parts. Because the term ‘Booking.com’ is just such an ordinary ‘generic.com’ term, in my view, it is not eligible for trademark registration.”

Justice Breyer expressed concern that owners of generic domain names enjoy a competitive advantage because of their exclusivity, not because of the quality of the product or goodwill but because the owner “was fortunate (or savvy) enough to be the first to appropriate a particularly valuable piece of online real estate.”

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

USPTO v. Booking.com B.V., U.S. Supreme Court, decided June 30, 2020.