Maria CedroniJuly 6, 2020 

On Tuesday, June 30, 2020, the Supreme Court rejected the U.S. Patent and Trademark Office’s (USPTO) proposed rule that a generic term, combined with a generic Internet suffix (e.g., “.com’), is generic and, thus, not eligible for federal trademark registration. That means that adding “.com” to a generic term – in this case, Booking.com – can make the entire combination eligible for trademark protection.

The Court found that the USPTO’s  per se rule was improper and that the correct test for whether a term is generic is whether the term, as a whole, signifies a class of goods or services.

The ruling provides an incentive for businesses with an online presence to consider registering their domain name to bolster protection for their intellectual property.

At issue was whether the USPTO was correct in rejecting an application to register Booking.com, a booking accommodations website, as a trademark. The USPTO argued that, absent exceptional circumstances, every “generic.com” term is generic and ineligible for trademark registration. On appeal of the refusal, the district court found Booking.com is not generic. The Court of Appeals for the Fourth Circuit agreed with the district court. The USPTO appealed.

To be eligible for registration, a mark must be one by which the goods of the applicant may be distinguished from the goods of others. The Supreme Court found that the question of whether Booking.com is generic “turns on whether that term, taken as a whole, signifies to consumers the class of online hotel-reservation services.” The Court found that a consumer would not perceive the term Booking.com to be generic, noting that a consumer would not understand Travelocity (another provider of online hotel-reservation services) to be “a booking.com” and would not ask which “booking.com” is best for hotel reservations. Thus, the Court reasoned, Booking.com is not a generic name to consumers, and it is not generic for purposes of trademark registration.

In response to the USPTO’s argument that its proposed rule should be applied, the Supreme Court noted that the application of the proposed rule to Booking.com was not in keeping with the USPTO’s own prior registrations such as art.com and dating.com and that such registrations would be put in danger of cancellation if the USPTO’s rule were adopted.

The USPTO further argued that application of a common law principle applied in Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co. should be applied to applications to register generic.com terms. In that case, it was held that adding the word “Company” to an otherwise generic term does not make the term eligible for trademark registration. The Supreme Court rejected this argument, finding that a generic.com term may be capable of identifying the source of goods/services to a consumer. The Court also weighed the fact that a given internet domain name is specific to a given entity stating that “consumers could understand a given ‘generic.com’ term to describe the corresponding website or to identify the website’s proprietor.”

The Supreme Court cautioned that its ruling does not mean that all “generic.com” terms are eligible for trademark registration as there may be some that are generic.  The ruling also does not speak to whether a “generic.com” term complies with other requirements for trademark registration.

For more information about the process of obtaining a trademark, click here. If you have questions about trademarking your domain name, please reach out to us here. We’d be happy to help.

Maria Cedroni is an associate at Walter | Haverfield who focuses her practice on intellectual property law. She can be reached at mcedroni@walterhav.com or at 216-619-7846.