The Sum Is Greater Than Its Parts: U.S. Supreme Court Holds Booking.com Is a Protectable Trademark
A generic.com term may be eligible for trademark protection if consumers perceive the term as a source identifier.
The combination of a generic word plus ".com" does not necessarily equal a generic term. Instead, in an 8–1 decision, the U.S. Supreme Court held: "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." United States Patent and Trademark Office et al. v. Booking.com B.V., 591 U.S. ___ (2020), slip op. p. 1. Because of lower court determinations (undisputed before the Supreme Court) that consumers perceived "Booking.com" as descriptive specifically of Booking.com's online reservation services rather than as a generic name for a class of services, the term is not generic and is eligible for federal trademark registration.
The Court's decision, authored by Justice Ginsburg, follows a telephonic oral argument—the first-ever for the Court. At issue during the argument, and rejected in the Court's decision, was the U.S. Patent and Trademark Office's "sweeping rule" that the combination of a generic term and generic top-level domain is generic, regardless of consumer perception evidence. Unlike a corporate designation (e.g., "Company"), a "generic.com" term, which is associated with a specific website, may be a source identifier because only one entity may own a given domain name.
Additionally, holding a composite of generic elements as always generic ignores consumer perception. "Whether any given 'generic.com' term is generic … 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." Slip op., p. 11.
Rejecting anti-competitive concerns raised by the Patent and Trademark Office and echoed in the sole dissent (by Justice Breyer), the Court noted that such concerns also accompany descriptive marks, which are accordingly provided a narrower scope of trademark protection. A mark with generic or descriptive components is a weaker mark, making it harder to show a likelihood of consumer confusion.
For registrants of generic terms as top-level domains, this decision provides assurance that such domain names are capable of trademark protection if consumers perceive the domain name as a source identifier. Accordingly, trademark owners should ensure such marks distinguish the source of the relevant goods or services by using the marks in the proper manner, including as adjectives modifying nouns and with trademark notice.
