In a most expected decision, on June 30, 2020, The Supreme Court of the United States ruled that adding “.com” to a generic word can make the entire combination eligible for trademark protection. Thus, affirming The U.S. District Court for the Eastern District of Virginia decision reversing the denial of registration by the USPTO of booking.com trademark application.

“A term is generic if it is the “common name of a product” or “the genus of which the particular product is a species,” such as LITE BEER for light beer, or CONVENIENT STORE for convenience stores. OBX-Stock, Inc., 558 F.3d at 340.”

“Accordingly, generic terms can never obtain trademark protection, as trademarking a generic term effectively grants the owner a monopoly over a term in common coinage.

“Distinctiveness is acquired by “substantially exclusive and continuous use’ of the mark in commerce.” In re Owens-Corning Fiberglas Corporation, 774 F.2d 1116, 227 USPQ 417, 424 n. 11 (Fed. Cir. 1985), citing, Levi Strauss & Co. v. Genesco, Inc., 742 F.2d 1401, 222 USPQ 939, 942 (Fed. Cir. 1984).

Although the Court rejected “..the rule proffered by the PTO that “generic.com” terms are generic names…” they did “…not embrace a rule automatically classifying such terms as nongeneric. Whether any given “generic.com” term is generic, we hold, depends on whether consumers in fact perceive that term as the name of a class or, instead, as a term capable of distinguishing among members of the class.”

Thus, the Court reasoned that “term is generic depends on whether consumers perceive the term as a source indicator.”

The Court concluded that “A “generic.com” term might also convey to consumers a source-identifying characteristic: an association with a particular website.” “The courts below determined, and the PTO no longer disputes, that consumers do not in fact perceive the term “Booking.com” that way. Because “Booking.com” is not a generic name to consumers, it is not generic.”

https://www.supremecourt.gov/opinions/19pdf/19-46_8n59.pdf

I have helped countless small to medium sized businesses navigate the intricacies of genericness  and descriptiveness in trademark law to secure and protect their intellectual property rights. I’d like to help you too by protecting your rights to trademarks, copyrights, and other intellectual property rights in the US and overseas.

1 thought on “Update on the Booking.com Case and the use of generic trademarks and top-level domain names”

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