In a United States Supreme Court decision issued on June 30, 2020 United States Patent & Trademark Office v. Booking.com B. V. the Court ruled that a generic term, “Booking” in this case, can be trademarked when followed by “.com.”
Booking.com is a popular website used to assist travelers with booking hotels, flights, rental cars, and other travel/vacation needs. While internet domain names are unique and can be owned, the operators of Booking.com sought to register “Booking.com” as a trademark through the Patent and Trademark Office (PTO).
The PTO denied Booking.com’s request stating that the term “booking” is generic and several other similar websites use the term “booking” when referring to the system by which people select and confirm payment for travel arrangements. Booking.com then appealed that decision to the District Court which reversed the PTO’s decision and determined that “Booking.com” was not generic for purposes of trademark registration. The PTO appealed that decision to the Supreme Court which affirmed.
In an 8-1 decision, the Court’s opinion, written by Justice Ruth Bader Ginsburg, stated that while the term “booking” by itself was generic, the exclusivity of “Booking.com,” combined with the consumer surveys submitted by Booking.com, indicate that the phrase “Booking.com” is not thought of as generic.
While the Court held that the generic term, “booking” combined with “.com” created a non-generic term, the Court was careful to indicate that this could not be a blanket application to all generic terms with “.com” at the end, but instead must be reviewed on a case-by-case basis to determine if the combined term is perceived by the public to be generic or specific.
The key takeaway from this case is that a generic term followed by “.com” does not automatically create a generic composite term precluding trademark registration. The PTO and the Courts, if necessary, will need to look at each trademark request on a case-by-case basis to determine if that term is truly perceived as generic. If so, the trademark request can be denied, but if the composite term is not generic, the request should be granted.
This same analysis should be applied to other domain names using .net, .biz, .org, .edu, etc.
The full text of the opinion can be found here: https://www.supremecourt.gov/opinions/19pdf/19-46_8n59.pdf
