In United States Patent & Trademark Office v. Booking.com B. V.,[1] SCOTUS held that a mark styled as “generic.com” is eligible for federal trademark registration if the applicant shows  “generic.com” is not a generic name to consumers. Although the Court did not expressly say so, this decision chips away at the rule that generic terms cannot become protectable marks.[2]

A travel-reservation agency known as “Booking.com” sought to register a trademark for its website of the same name with the United States Patent and Trademark Office (“PTO”). The PTO denied the registration concluding that the term “Booking.com” is a generic name, a name of a class of products or services instead of a specific brand. So, BOOKING.COM was ineligible for federal trademark registration.

According to the PTO, “booking” was a generic term for online hotel-reservations, and the combination of generic term with “.com” did not overcome this finding.[3] Booking.com sought judicial review, and the District Court determined that BOOKING.COM—unlike the term “booking” standing alone—is not generic. The Court of Appeals affirmed and the PTO sought review with SCOTUS.

The 8–1 majority opinion plays out a clash between two principles of trademark law: the ability to distinguish one’s goods from another’s based on consumer recognition and the need to leave generic terms in the public domain.[4]

The PTO relied on the principle articulated in Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U. S. 598 (1888), which stated that a generic term followed by word “company” is not trademark-eligible. But the majority opinion distinguished the prior ban on generic terms by noting that that the mark “generic.com” implies a specific website domain that is only occupied by one entity at a time. So, if the public perceives “generic.com” as a specific brand name—which, in the case of BOOKING.COM, consumer surveys indicate it does—the term acquires the descriptiveness needed for federal trademark registration.[5]

Although the majority noted that marks like BOOKINGS.COM would be “weak” marks that would necessarily be difficult to enforce in court, Justice Breyer, the lone dissenter, urged that the majority underestimated the anticompetitive effects of the holding. According to Justice Breyer, “[t]erms that merely convey the nature of the producer’s business should remain free for all to use.”[6]

With this decision, SCOTUS has decisively expanded the availability of federal registration for domain names containing generic terms. This relaxing of the sweeping anti-generic rule may indicate an uptick in trademark registrations for historically generic terms (as long as they include “.com”).

The author wishes to thank their law clerk, Joseph Balhoff, for their assistance in preparing this article. 

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[1] The opinion is available at: https://d2qwohl8lx5mh1.cloudfront.net/5OsQDpOQ2dJ63nh0n-PMog/content.

[2] See Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir. 1976).

[3] United States Patent & Trademark Office v. Booking.com B. V., No. 19-46, 2020 WL 3518365, at *2 (U.S. June 30, 2020).

[4] Id. at *9 (Breyer, J., dissenting).

[5] Id.

[6] Id. at *9 (citing Goodyear, 128 U.S. at 603).