June 30, 2020
Decided June 30, 2020
U.S. Patent and Trademark Office v. Booking.com B.V., No. 19-46
Today, the Supreme Court held 8-1 that under the Lanham Act, the combination of an otherwise generic term and a top-level Internet domain (such as “.com”) can create a protectable mark if consumers recognize the mark as a brand name.
Under the Lanham Act, 15 U.S.C. § 1051 et seq., generic terms may not be registered as trademarks, but terms that are “merely descriptive” of goods or services may be registered if the public has come to understand them as identifying the trademark owner’s goods or services. Booking.com, a hotel reservation website, applied to register the mark BOOKING.COM. The U.S. Patent and Trademark Office (PTO) determined that “booking” is the generic term for hotel reservation services and denied registration. Booking.com sought judicial review, and the district court overturned the denial. The court held that the mark was protectable because combining the generic term “booking” with the top-level domain name “.com” resulted in a descriptive term, and survey evidence showed that most consumers recognize BOOKING.COM as a brand name, not merely a product category. A divided Fourth Circuit panel affirmed.
Whether the addition by an online business of a generic top-level domain (“.com”) to an otherwise generic term can create a protectable trademark under the Lanham Act.
Yes. The addition of “.com” to an otherwise generic term can create a protectable trademark where the evidence shows that consumers understand the combined term as identifying or distinguishing a particular supplier’s goods or services.
“Whether any given ‘generic.com’ term is generic . . . 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.”
Justice Ginsburg, writing for the Court
Gibson Dunn submitted an amicus brief on behalf of Salesforce.com, Inc. et al. in support of respondent: Booking.com B.V.
What It Means:
The Court’s opinion is available here.
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