Generic word with '.com' at end can be trademarked, SCOTUS rules

Ruben Fields
July 3, 2020

Booking Holdings' trademark was refused by the US Patent and Trademark Office, whose lawyers ruled that generic terms can not be used as trademarks, even if it has acquired a secondary meaning. At first instance the mark was refused registration as the USPTO deemed it to be generic under the above rule, meaning the name would only have the descriptive meaning to consumers of the service and would not signify that particular website to consumers. Thus, the mark should not be afforded trademark protection. "However, domain names and their registration and trademarks has been a hot-button issue for some time, since the inclusion of ".com" along with a descriptive element might not be enough to allow for their registration.

"The United States Patent and Trademark Business office had earlier denied Scheduling.com's trademark software simply because it believed the name to be generic, even with the ".com" addition. The Court repeated that "whether a term is generic depends on its meaning to consumers" and emphasized that the "Lanham Act is incompatible with an unyielding legal rule that entirely disregards consumer perception".

"We might similarly expect that a consumer, searching for a trusted source of online hotel reservation services, could ask a frequent traveller to name her favourite "Booking.com" provider", she added.

"Because "Booking.com" is not a generic name to consumers, it is not generic", she wrote.

"The Court also disagreed with the PTO's separate distinctiveness analysis of "Booking" and ".com", finding that the analysis should have only been applied to the term as a whole.

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No doubt evidence of acquired recognition and meaning will be very important in judging whether other trademarks have grown from generic or descriptive into a protectible brand. "That association, the Court reasoned, distinguishes the addition of ".com" from "company". The appellate court said the patent office failed to prove that consumers think "booking.com" refers in general to online hotel reservation services.

The case of USPTO v Booking.com BV concerned the registration of the mark "Booking.com" by, you guessed it, Booking.com BV, which is a site specialized in the booking of hotels for travelers. Justice Stephen G. Breyer was the only dissenter.

Justice Ginsburg then moved onto considering whether the mark in question is registrable or not.

Generic word with '.com' at end can be trademarked, ...

"Ultimately, the PTO may no longer, as a rule, determine that combining a generic term with ".com" automatically renders the compound term generic.

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