Supreme Court Clears the Way for Generic.com Trademark Registrations

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On June 30, 2020, the U.S. Supreme Court issued its opinion in United States Patent and Trademark Office v. Booking.com B.V. At issue was whether combining an otherwise generic term, such as “the name of a class of products or services,” with a generic top-level domain, such as “.com,” renders the resulting combination eligible for federal trademark registration. Booking.com, No. 19-46, at 1 (June 30, 2020). Specifically, Respondent Booking.com, a travel-reservation website, sought to register a trademark in “Booking.com” despite acknowledging that the word “booking” is generic for reservation services. Id. Petitioner, the U.S. Patent and Trademark Office (“USPTO”), had previously refused registration, stating that the combination of the generic word and “.com” is generic. Id. at 4-5. The U.S. District Court for the Eastern District of Virginia and the U.S. Court of Appeals for the Fourth Circuit both concluded that “Booking.com” was not generic, and the USPTO appealed that determination. Id. at 5.

Justice Ruth Bader Ginsburg, writing for an eight-justice majority, concluded “[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.” Id. at 1 (emphasis added). In holding that “Booking.com” is a protectable mark, the Court relied on the lower courts’ finding that survey evidence demonstrated that consumers recognized “Booking.com” as a brand name. Id. at 7. The lower courts determined that “Booking.com” was therefore descriptive and had acquired secondary meaning for hotel-reservation services. Id. at 5. Because consumers do not perceive the term “Booking.com” to signify the class of online hotel-reservation services, the Court held, “it is not generic.” Id. at 7.

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