When is a generic word + “.Com” not generic? When the public doesn’t think so, according to the Supreme Court’s ruling in United States Patent and Trademark Office v. Booking.com B.V. But it takes a great deal of advertising and investment in public recognition to reach the level of recognition as a trademark.

The dispute over the registrability of “BOOKING.COM” began after Booking.com filed four federal trademark applications. A USPTO Examining Attorney rejected those applications based on the view that “BOOKING.COM” is generic and therefore incapable of acquiring “secondary meaning” as a trademark. In other words, because BOOKING is generic, and “.COM” is merely an identifier for use on the internet, “BOOKING.COM” is generic and not entitled to registration.

Booking.com appealed the decision, first to the Trademark Trial and Appeal Board (TTAB), which sided with the USPTO.

The company appealed again in the Eastern District of Virginia. It was there that Booking.com presented as evidence a survey showing that a majority (approximately 75%) of consumers recognize the name “BOOKING.COM” as a brand rather than a generic term for a reservation service. The Court was convinced and reversed the TTAB’s decision, determining that Booking.com had adequately differentiated its name from the generic term “booking.” The case was then brought to the Fourth Circuit Court of Appeals, which upheld the lower court’s decision. The USPTO appealed.

After the Supreme Court’s first-ever remote and live-streamed oral argument, Justice Ginsburg wrote the 8-1 majority opinion. Calling the USPTO’s rule against registration of generic terms paired with “.COM” “sweeping” and “nearly per se”, the Court held that although “booking” is a generic term for hotel reservation services, adding the “.com” element rendered it a compound term that needs to be considered as a whole. “If `Booking.com’ were generic,” the Court said, “we might expect Travelocity – another such service – to be a `Booking.com.’”

The Court repeatedly looked to consumer perception that “Booking.com” identifies a particular source of the travel reservation services, stating plainly that “Because `Booking.com’ is not a generic name to consumers, it is not generic.” The Court also called attention to the USPTO’s inconsistent application of its rule that a generic term paired with “.com” is generic and cannot function as a trademark – “ART.COM” is registered as a trademark for online retail store services offering art prints, original art and the like, and “DATING.COM” is registered for “dating services”.

The Court made clear that just as there is no sweeping rule that such a term is generic, it is not automatic that it is not generic either. Again, the Court stated that it depends on consumer perception – whether the public will assume the “generic.com” term is the name of a class of goods or services, or as a term capable of distinguishing among members of this class. In the latter situation, a term may be descriptive rather than generic, and under the theory of “acquired distinctiveness”, a descriptive term can gain significance as a trademark if the public comes to associate it with a single source of the goods or services. The Court concluded this to be the case here.

Justice Breyer wrote the dissent, which focused in part on Booking.com’s consumer surveys. “The survey participants who identified `Booking.com’ as a brand likely did so because they had heard of it, through advertising or otherwise.” In this author’s opinion, this argument makes the majority’s point – that it is public recognition that gives “BOOKING.COM” its acquired distinctiveness and makes it eligible for trademark protection.

If you have any questions about trademark protection for domain names, or other trademark or intellectual property (IP) matters, please contact Laura Winston at lwinston@offitkurman.com or 347.589.8536.