Highlights of Supreme Court Decision in Booking.com

• The Supreme Court ruled that a generic term combined with “.com” or other top-level domain can be registered as a trademark if there is sufficient evidence that consumers recognize the “generic.com” term as an indicator of source.
• Specifically, the Supreme Court held that “booking.com” could be registered as a trademark, even though the term consists of a generic term followed by “.com.”
• This decision opens the door for registration of other “generic.com” terms but applicants with weak, little or no evidence of consumer brand recognition need not apply.
• Booking.com B.V. (Booking.com) had expensive survey evidence that showed an amazing 74% of all consumers surveyed associated the booking.com term with a single source of online hotel reservation services – an impressive amount for any mark.

Supreme Court Decision in Booking.com Case

Booking.com, owner of the popular travel booking website, previously applied to register four trademarks with the U.S. Patent and Trademark Office (USPTO) in connection with its online hotel reservation services, each containing the term “booking.com.” In concluding that “booking.com” was a generic name for online travel-related reservation services, the USPTO refused to register the marks under the well-established principle that generic terms (or “the name of a class of products or services”) are ineligible for federal trademark registration. Booking.com sought review by the United States District Court for the Eastern District of Virginia, which found that the term “booking.com” was not generic, but rather descriptive and that the marks had acquired secondary meaning. Relying heavily on survey evidence that 74.8% of relevant consumers considered “booking.com” to be a brand rather than a generic service, the district court found that the mark was distinctive and thus eligible for federal registration. The Fourth Circuit affirmed this decision.

On appeal to the Supreme Court (U.S. Patent and Trademark Office v. Booking.com B.V.), the Court ruled that the term “booking.com” is eligible for trademark registration, even though “booking” is a generic term for online hotel reservation services. The Court’s majority declined to adopt the USPTO’s per se rule that all “generic.com” marks are generic and may not be protected as trademarks. The USPTO argued that a generic word combined with a top-level domain (TLD) like “.com” is analogous to a generic word combined with an entity designator like “company” or “limited.” In the case of entity designations, the Court had previously held that the addition of an entity designator to an otherwise generic mark does not render the combination distinctive because the entity designation is incapable of providing source-indicating significance to the mark as a whole. The Court distinguished that prior precedent, holding that unlike an entity designation, a TLD can distinguish source because the resulting combination – “generic.com” – directs consumers to a single, specific website, and domain names themselves can only be occupied by one entity at a time.

Importantly, the Court declined to adopt a bright-line rule that any “generic.com” term is generic and therefore unregistrable. Although the decision provides a path forward for registration for “generic.com” terms, in practice only a very small number of applicants will likely be able to successfully register their term, as it will be difficult, absent an impressive survey, to submit convincing evidence that a “generic.com” term identifies a particular source. Thus, to avoid costly litigation over the issue of registration, selecting a distinctive mark remains the easiest and most cost-effective way to procure federal registration and will result in a mark that is easier to defend and enforce.

Critical Takeaways for Proper Trademark Use

The Court’s decision provides some assurance for applicants that “generic.com” terms are capable of trademark protection if consumers perceive the term as a source identifier. Accordingly, to maximize the chances of successfully registering the term with the USPTO and to build brand awareness, the following basic recommendations for proper trademark use are even more critical in this instance:

• Use the “generic.com” term in a unique font or stylization on your website sufficient to set the term apart from the surrounding text.
• Use the term as an adjective followed by a modifying noun.
• Use a TM with the term to denote that the term is intended to function as a mark.
• Use “look for” advertising to instruct consumers to look for your “generic.com” brand of goods or services.
• Consider having a survey taken to support any application for trademark registration should registration be refused on the basis that the term is generic for the goods/services for which registration is sought.