Supreme Court Rules That Generic Terms in Combination with Domain Name Endings Can Be Protectable Trademarks
July 7, 2020
On June 30, 2020, the Supreme Court held in United States Patent and Trademark Office v. Booking.com B.V. that “Booking.com” is a registrable trademark. The United States Patent and Trademark Office (USPTO) argued that a generic term like BOOKING in combination with .COM is per se unregistrable as a combined generic term. The Supreme Court held that because consumers perceive the “generic.com” term as identifying a source, Booking.com is protectable as a trademark.
Generic vs. Descriptive Marks
To understand the Court’s ruling, it is important to understand the difference between “generic” and “descriptive” terms. Generic terms are never protectable as trademarks because they name the actual product or service. It would hinder competition if the USPTO granted a person a monopoly through trademark registrations in words like “car” for cars or “computer” for computers. Competitors need to use these terms to identify their products. In this case, it was undisputed that the term “booking” is generic for an online hotel-reservation service.
Descriptive terms describe aspects of products or services. They, too, are not registrable, as competitors need to use such words to describe their products and services. However, unlike generic terms, through substantially exclusive and extensive use and advertising, consumers can come to recognize descriptive terms as indicating the source. (Trademarks function as source-identifiers.) In such cases, the descriptive terms have acquired secondary meaning in consumers’ minds and therefore are protectable as trademarks. AMERICAN AIRLINES is an example of a descriptive term that has acquired secondary meaning, and thus is a protectable trademark.
The Supreme Court’s Holding
The Court rejected the USPTO’s position that a generic term in combination with .COM is an unprotectable generic term. Whether a “generic.com” domain name is generic or worthy of trademark protection rests on whether consumers perceive the domain name as capable of serving as a source-identifier. Survey evidence found that nearly 75% of participants regarded Booking.com as a brand name, rather than a generic term.
The holding in the Booking.com case does not mean that “generic.com” combinations will automatically be granted trademark protection. Instead, the domain name owners would have to prove that consumers recognize the terms as having acquired secondary meaning through such means as survey evidence, extensive promotion, and dictionary definitions, which can be costly endeavors. Moreover, the scope of protection granted to such terms will be narrow because others use such common terms to describe their goods and services. For example, Booking.com will not be able to prevent other hotel reservation websites from using the term “booking” in a fair use sense.
What Does the Booking.com Case Mean for Businesses?
Trademark registrations are important business assets because they afford their owners the exclusive right to use the marks in connection with the goods and services listed in the registration certificates. Building a family of trademark registrations can help strengthen a brand’s equity and assist with trademark enforcement. If you have a domain name that you regard as a valuable business asset, and consumers recognize the domain name as a brand name, consider exploring whether it would be protectable as a registered trademark.