Supreme Court Rules on Trademark of Generic Terms as Domain Names

Does the addition by an online business of a generic top-level domain (“.com”) to an otherwise generic term create a protectable trademark, notwithstanding the Lanham Act’s prohibition on generic terms as trademarks?

BOOKING.COM alleges that, despite the generic nature of the term “booking,” their addition of “.com” creates a protectable trademark. The US Patent and Trademark Office alleges that merely adding a top level domain (“.com”) to a generic term does not rise to the level of registrability. In an 8-1 decision, the Supreme Court overruled the PTO’s decision in favor of BOOKING.COM, stating that “A term styled ‘generic.com’ is a generic name for a class of goods or services [and thus ineligible for federal trademark registration] only if the term has that meaning to consumers.” Because the lower court determined that consumers do not perceive the term “BOOKING.COM” as a generic indication of online hotel-reservation services as a class, it is not a generic term and thus is eligible for federal trademark registration.

The Supreme Court did not dispute the basic rule that generic terms are not eligible for trademark protection, nor did they argue that “booking” was not a generic name. The Court took issue, however, with the PTO’s argument that the combination of a generic word and “.com” must also be generic—instead, finding that such a sweeping rule is not supported by the PTO’s own past practice or by trademark law or policy. According to the Court, adding “.com” to a name is not equivalent in the eyes of the consumer as the word “company.” If the word has taken on a specific meaning to consumers, not as a class of business, then it has risen to the level of a protectable and registrable trademark. BOOKING.COM was therefore held registrable.