July 7, 2020

U.S. Supreme Court’s Booking.com Ruling Supports Domain Name Trademark Registration

In a nearly unanimous decision, the U.S. Supreme Court recently ruled that Booking.com was not a generic term and is entitled to protection under trademark law. In examining the effect of adding “.com” to a generic term, the court relied greatly on evidence from surveys to determine that consumers recognized Booking.com to be a source identifier, whereas “booking” itself was not.

In previous decisions, the court separated marks into five categories: (1) generic; (2) descriptive; (3) suggestive; (4) arbitrary; or (5) fanciful. Generally, marks that were categorized as generic or descriptive were not capable of obtaining trademark protection, and marks that were suggestive, arbitrary or fanciful were able to be trademarked.

The question asked in Patent and Trademark Office v. Booking.com B.V. was whether or not adding “.com” to a generic word like “Booking” can render the resulting combination of terms registerable as a trademark. In finding Booking.com non-generic, the court avoided an ironclad ruling that whenever “.com” is added to a generic term it becomes trademarkable. The court ruled, however, that due to the specific evidence in the Booking.com case, the trademark owner had proven a non-generic mark.

Nevertheless, the effect of the ruling in Booking.com has greatly enhanced the value of top-level domain names (TLD). While the mere addition of “.com” to a generic term will not automatically require recognition of the “generic.com” combination as being trademarkable, a generic.com term that also has some consumer recognition as being the identifier of the source of a particular good or service will be worthy of a trademark. As a result, owners of generic.com, generic.biz, generic.edu or generic.info domain names should consider applying for federal trademark registrations since the Booking.com ruling has now opened the door for registration of such domain names.

If you do submit a generic.com registration, you may wish to have survey evidence in hand to prove non-genericness of your mark. The court held that the relevant meaning of a term is its meaning to consumers: Evidence informing that [non-generic] inquiry can include not only consumer surveys, but also dictionaries, usage by consumers and competitors, and any other source of evidence bearing on how consumers perceive a term’s meaning. Surveys can be helpful evidence of consumer perception but require care in their design and interpretation.”

For example, the court carefully reviewed evidence of how consumers perceived Booking.com. The court stated that a generic.com term might “convey to consumers a source-identifying characteristic: an association with a particular website.” The court reasoned that only one entity can occupy a particular internet domain name at a time, so “[a] consumer who is familiar with that aspect of the domain-name system can infer that BOOKING.COM refers to some specific entity.”

For more information about how to determine the benefits of a federal trademark registration for your business, please contact a member of Gould & Ratner’s Intellectual Property Practice.