Supreme Court Rules That Adding ".com" To A Generic Term Can Result In A Protectable Mark

• Published date: 03 July 2020
• Subject Matter: Consumer Protection, Intellectual Property, Consumer Law, Trademark
• Law Firm: Ropes & Gray LLP
• Author: Mr Peter Brody, Emilia F. Cannella, Evan Gourvitz, Erica L. Han and Gabriel M. Gillmeyer

In Booking.com v. United States Patent and Trademark Office, 591 U.S. ___ (2020), the Supreme Court rejected the United States Patent and Trademark Office's (PTO) proposed rule that all marks that combine a generic term with an Internet domain name suffix such as '.com' are per se generic and therefore unprotectable. According to the Court, such a 'sweeping' rule is inconsistent with the principles of trademark law, and 'generic.com' marks can be protectable if consumers recognize the mark as an identifier of the source of certain goods and/or services.

Background

In 2011 and 2012, Booking.com B.V. (Booking.com), which maintains a travel reservation website at the domain name , filed U.S. applications to register its service mark BOOKING.COM (word mark and stylized versions) for online hotel reservations and related services. The PTO rejected the applications, finding that 'booking' was generic for those services, and the addition of the '.com' top-level domain (TLD), which itself is generic, did not make the mark protectable.

On appeal, the U.S. District Court for the Eastern District of Virginia disagreed, holding that 'when combined with an SLD [second-level domain], a TLD generally has source identifying significance and the combination of a generic SLD and a TLD is generally a descriptive mark that is protectable upon a showing of acquired distinctiveness.' The District Court found that Booking.com had satisfied that showing. The Fourth Circuit affirmed the result, though it refused to adopt the district court's rule that a generic SLD combined with a TLD usually is descriptive.

Supreme Court Decision

In an opinion authored by Justice Ginsburg and joined by seven other justices, the Court affirmed the Fourth Circuit's ruling and rejected the PTO's proposed per se rule that a mark consisting of a generic SLD and a TLD is always generic as a matter of law. The Court focused on the Lanham Act's emphasis that the primary significance of a mark is determined by consumer perception of that mark, and held that a mark of the form of 'generic.com' is generic only 'if the term has that meaning to consumers.' Relatedly, the Court agreed with the Fourth Circuit that while a 'generic.com' term is not automatically protectable, it can become so if consumers recognize and perceive that term, considered in its entirety, as a source identifier.

Applying these principles, the Court reasoned that if Booking.com were generic, 'we might expect consumers to understand...