SCOTUS Rules That Addition of “.com” to a Generic Term Can Be Protected by Trademark
On June 30, 2020, the U.S. Supreme Court held that the addition of
“.com” to a generic term can be protected by trademark law, affirming a
decision by the U.S. Court of Appeals for the Fourth Circuit. (United States Patent and Trademark Office v. Booking.com B.V., U.S., No. 19-46)
Booking.com B.V. provides on-line hotel reservations and related services under the
brand “Booking.com.” Their application for trademark registration of
BOOKING.COM with the United States Patent and Trademark Office (USPTO)
was denied as being generic for the services at issue. Booking.com
sought review of the USPTO decision in the U.S. District Court for the
Eastern District of Virginia, which ruled that the term was not generic
because the consuming public “primarily understands that BOOKING.COM
does not refer to a genus, rather it is descriptive of services
involving ‘booking’ available at that domain name”, as supported by new survey evidence concerning consumer perception of the mark. The USPTO appealed to the Court of Appeals for the Fourth Circuit, which affirmed the decision of the District Court.
Justice Ginsburg, writing for an 8-1 majority, affirmed the decision of the lower courts, explaining whether “Booking.com” is generic turns on whether that term, taken as a whole, signifies to consumers the class of online hotel-reservation services or a particular company providing those services. Ginsburg further noted that, since only one entity can occupy a particular internet domain name at a time, consumers would likely infer that “Booking.com” refers to “some specific entity” and therefore was associated with the source of the services rather than the services themselves.