USPTO v. Booking.com: Adding “.com” can now Establish Trademark Eligibility for a Generic Term.
In a recent Supreme Court case, USPTO v. Booking.com, the Court determined that a so-called “generic.com” mark is eligible for federal trademark registration. “Generic.com” marks are a combination of a generic word or phrase (e.g., “wine” or “haircuts”) with “.com” added to the end. Such marks were previously considered ineligible for federal trademark registration because they were believed to be incapable of distinguishing one company’s goods or services from another’s. A similar principle was enshrined in the 19th century decision Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U.S. 598 (1888), in which the Court held that a generic corporate identifier (e.g., “Inc.” or “Co.”) added to a generic term does not make the generic term eligible for federal trademark registration.
The Supreme Court rejected the USPTO’s arguments against trademark eligibility. Relying on Goodyear, the USPTO argued that the generic term “Booking” with the addition of “.com” is a generic composite that is ineligible for trademark registration. After losing at both the Eastern District of Virginia and the Court of Appeals for the Fourth Circuit, the USPTO appealed to the US Supreme Court. However, the Court rejected the USPTO’s argument, determining that a mark must be analyzed as a whole rather than as a combination of its parts. The Court further reasoned, relying on section 1064(3) of the Lanham Act, that customer perception of a mark is the only relevant factor when determining the generic nature of that mark. The USPTO also argued that Booking.com enjoys many benefits from the exclusivity that owning a domain name confers. The Court rejected this argument, saying that the USPTO failed to explain how domain name exclusivity made the domain name generic.
While the generic nature of a particular mark is considered subjective and open to argument, this ruling will likely aid applicants seeking federal protection for marks that rely at least in part on the use of “.com.” The Court opined that internet domains are a special circumstance distinguishable from corporate identifiers, because a “.com” term might signal to consumers an association with a particular website, which is a source-identifying characteristic. Based on this holding, applicants may now advance arguments that tie their domain name with a particular mark.