In a landmark trademark decision, the U.S. Supreme Court held that Booking.com was entitled to federal trademark protection
In a landmark trademark decision, the U.S. Supreme Court held that Booking.com was entitled to federal trademark protection. In so ruling, the Court rejected the rule proffered by the U.S. Patent and Trademark Office (USPTO) under which combining a generic term with “.com” would yield a generic composite that may never be a valid trademark.
“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,” Justice Ruth Bader Ginsburg wrote on behalf of the Court in United States Patent and Trademark Office v. Booking.com B.V.
Trademark Registration Dispute
Booking.com operates a website on which customers can book hotel accommodations. In 2012, the company filed four federal trademark-registration applications for marks that included or consisted of the term “Booking.com.” The applications sought registration for use of the marks in connection with “online hotel reservation services.”
The United States Patent and Trademark Office (USPTO) refused registration. It concluded that the term “booking” is generic for the services as to which Booking.com sought registration. Moreover, the addition of the generic top-level domain “.com” did not create a protectable mark.
On appeal, the U.S. District Court for the Eastern District of Virginia held that the term Booking.com was not generic. The Fourth Circuit Court of Appeals affirmed. It held that the public’s understanding of Booking.com, taken as a whole, establishes it as a descriptive mark rather than a generic term. In support, it cited the USPTO’s lack of evidence demonstrating that the public uses “booking.com” generically. The Fourth Circuit also placed great weight on Booking.com’s consumer survey, which found that 74.8% of respondents identified Booking.com as a brand name. According to the appeals court. “the survey is strong evidence that the public does not understand Booking.com to refer to the proposed mark’s generic meaning.”
SCOTUS Greenlights Generic.com Trademarks
By a vote of 8-1, the Supreme Court affirmed. It held that a term styled “generic.com” is a generic name for a class of goods or services—and thus ineligible for federal trademark protection—only if the term has that generic meaning to consumers.
According to the Court, whether a compound term is generic turns on whether that term, taken as a whole, signifies to consumers a class of goods or services. The Court further concluded that consumers do not in fact perceive the term “Booking.com” that way. As Justice Ginsburg explained:
[W]hether “Booking.com” is generic turns on whether the term, taken as a whole, signifies to consumers the class of hotel reservations services. … Consumers do not in fact perceive the term “Booking.com” that way, the courts below determined. … That should resolve the case: because “Booking.com” is not a generic name to consumers, it is not generic.
In reaching its decision, the Court rejected the USPTO’s proposed per se rule that when a generic term is combined with a generic Internet-domain-name suffix like “.com,” the resulting combination is generic. Justice Ginsburg explained:
A “generic.com” term might also convey to consumers a source-identifying characteristic: an association with a particular website. As the PTO and the dissent elsewhere acknowledge, 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.” Thus, consumers could understand a given “generic.com” term to describe the corresponding website or to identify the website’s proprietor. We therefore resist the PTO’s position that “generic.com” terms are capable of signifying only an entire class of online goods or services and, hence, are categorically incapable of identifying a source.
The Court also dismissed the USPTO’s concerns that trademark protection for “Booking.com” could exclude or inhibit competitors from using the term “booking” or adopting domain names like “ebooking.com” or “hotel-booking.com.” As Justice Ginsburg noted, “That concern attends any descriptive mark.” Ginsburg went on to explain that several doctrines ensure that registration of “Booking.com” would not yield its holder a monopoly on the term “booking.”
Finally, the Court addressed the USPTO’s doubts that owners of “generic.com” brands need trademark protection in addition to existing competitive advantages. It found that any competitive advantages do not inevitably disqualify a mark from federal registration. “All descriptive marks are intuitively linked to the product or service and thus might be easy for consumers to find using a search engine or telephone directory. The Lanham Act permits registration nonetheless,” Justice Ginsburg wrote. “And the PTO fails to explain how the exclusive connection between a domain name and its owner makes the domain name a generic term all should be free to use. That connection makes trademark protection more appropriate, not less.”
Justice Stephen Breyer was the lone dissenter, arguing that the majority’s decision is “inconsistent with trademark principles and sound trademark policy.” He wrote: “By making such terms eligible for trademark protection, I fear that today’s decision will lead to a proliferation of ‘generic.com’ marks, granting their owners a monopoly over a zone of useful, easy-to-remember domains.”
Key Takeaway
The Supreme Court’s decision in United States Patent and Trademark Office v. Booking.com B.V. provides assurance to brand owners that the Trademark Office may not apply a per se rule to reject trademark applications for “generic.com” marks. Henceforth, each such trademark application must be evaluated to determine whether the applied-for term conveys a source-identifying meaning to consumers. The Court’s decision dramatically expands the availability of trademark protection for domain names. In addition, it significantly limits the number of such terms that will be deemed ineligible for trademark protection for being generic.
If you have questions, please contact us
If you have any questions or if you would like to discuss the matter further, please contact the Scarinci Hollenbeck attorney with whom you work, at 201-896-4100.
Does Your Homeowners Insurance Provide Adequate Coverage?
Your home is likely your greatest asset, which is why it is so important to adequately protect it. Homeowners insurance protects you from the financial costs of unforeseen losses, such as theft, fire, and natural disasters, by helping you rebuild and replace possessions that were lost While the definition of “adequate” coverage depends upon a […]
Understanding the Importance of a Non-Contingent Offer
Making a non-contingent offer can dramatically increase your chances of securing a real estate transaction, particularly in competitive markets like New York City. However, buyers should understand that waiving contingencies, including those related to financing, or appraisals, also comes with significant risks. Determining your best strategy requires careful analysis of the property, the market, and […]
Fred D. Zemel Appointed Chair of Strategic Planning at Scarinci & Hollenbeck, LLC
Business Transactional Attorney Zemel to Spearhead Strategic Initiatives for Continued Growth and Innovation Little Falls, NJ – February 21, 2025 – Scarinci & Hollenbeck, LLC is pleased to announce that Partner Fred D. Zemel has been named Chair of the firm’s Strategic Planning Committee. In this role, Mr. Zemel will lead the committee in identifying, […]
Novation Agreement Process: Step-by-Step Guide for Businesses
Big changes sometimes occur during the life cycle of a contract. Cancelling a contract outright can be bad for your reputation and your bottom line. Businesses need to know how to best address a change in circumstances, while also protecting their legal rights. One option is to transfer the “benefits and the burdens” of a […]
What Is a Trade Secret? Key Elements and Legal Protections Explained
What is a trade secret and why you you protect them? Technology has made trade secret theft even easier and more prevalent. In fact, businesses lose billions of dollars every year due to trade secret theft committed by employees, competitors, and even foreign governments. But what is a trade secret? And how do you protect […]
What Is Title Insurance? Safeguarding Against Title Defects
If you are considering the purchase of a property, you may wonder — what is title insurance, do I need it, and why do I need it? Even seasoned property owners may question if the added expense and extra paperwork is really necessary, especially considering that people and entities insured by title insurance make fewer […]
No Aspect of the advertisement has been approved by the Supreme Court. Results may vary depending on your particular facts and legal circumstances.
Sign up to get the latest from our attorneys!
Explore What Matters Most to You.
Consider subscribing to our Firm Insights mailing list by clicking the button below so you can keep up to date with the firm`s latest articles covering various legal topics.
Stay informed and inspired with the latest updates, insights, and events from Scarinci Hollenbeck. Our resource library provides valuable content across a range of categories to keep you connected and ahead of the curve.
US Supreme Court Rules Booking.com Eligible for Trademark Registration
Author: Scarinci Hollenbeck, LLC
In a landmark trademark decision, the U.S. Supreme Court held that Booking.com was entitled to federal trademark protection
In a landmark trademark decision, the U.S. Supreme Court held that Booking.com was entitled to federal trademark protection. In so ruling, the Court rejected the rule proffered by the U.S. Patent and Trademark Office (USPTO) under which combining a generic term with “.com” would yield a generic composite that may never be a valid trademark.
“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,” Justice Ruth Bader Ginsburg wrote on behalf of the Court in United States Patent and Trademark Office v. Booking.com B.V.
Trademark Registration Dispute
Booking.com operates a website on which customers can book hotel accommodations. In 2012, the company filed four federal trademark-registration applications for marks that included or consisted of the term “Booking.com.” The applications sought registration for use of the marks in connection with “online hotel reservation services.”
The United States Patent and Trademark Office (USPTO) refused registration. It concluded that the term “booking” is generic for the services as to which Booking.com sought registration. Moreover, the addition of the generic top-level domain “.com” did not create a protectable mark.
On appeal, the U.S. District Court for the Eastern District of Virginia held that the term Booking.com was not generic. The Fourth Circuit Court of Appeals affirmed. It held that the public’s understanding of Booking.com, taken as a whole, establishes it as a descriptive mark rather than a generic term. In support, it cited the USPTO’s lack of evidence demonstrating that the public uses “booking.com” generically. The Fourth Circuit also placed great weight on Booking.com’s consumer survey, which found that 74.8% of respondents identified Booking.com as a brand name. According to the appeals court. “the survey is strong evidence that the public does not understand Booking.com to refer to the proposed mark’s generic meaning.”
SCOTUS Greenlights Generic.com Trademarks
By a vote of 8-1, the Supreme Court affirmed. It held that a term styled “generic.com” is a generic name for a class of goods or services—and thus ineligible for federal trademark protection—only if the term has that generic meaning to consumers.
According to the Court, whether a compound term is generic turns on whether that term, taken as a whole, signifies to consumers a class of goods or services. The Court further concluded that consumers do not in fact perceive the term “Booking.com” that way. As Justice Ginsburg explained:
[W]hether “Booking.com” is generic turns on whether the term, taken as a whole, signifies to consumers the class of hotel reservations services. … Consumers do not in fact perceive the term “Booking.com” that way, the courts below determined. … That should resolve the case: because “Booking.com” is not a generic name to consumers, it is not generic.
In reaching its decision, the Court rejected the USPTO’s proposed per se rule that when a generic term is combined with a generic Internet-domain-name suffix like “.com,” the resulting combination is generic. Justice Ginsburg explained:
A “generic.com” term might also convey to consumers a source-identifying characteristic: an association with a particular website. As the PTO and the dissent elsewhere acknowledge, 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.” Thus, consumers could understand a given “generic.com” term to describe the corresponding website or to identify the website’s proprietor. We therefore resist the PTO’s position that “generic.com” terms are capable of signifying only an entire class of online goods or services and, hence, are categorically incapable of identifying a source.
The Court also dismissed the USPTO’s concerns that trademark protection for “Booking.com” could exclude or inhibit competitors from using the term “booking” or adopting domain names like “ebooking.com” or “hotel-booking.com.” As Justice Ginsburg noted, “That concern attends any descriptive mark.” Ginsburg went on to explain that several doctrines ensure that registration of “Booking.com” would not yield its holder a monopoly on the term “booking.”
Finally, the Court addressed the USPTO’s doubts that owners of “generic.com” brands need trademark protection in addition to existing competitive advantages. It found that any competitive advantages do not inevitably disqualify a mark from federal registration. “All descriptive marks are intuitively linked to the product or service and thus might be easy for consumers to find using a search engine or telephone directory. The Lanham Act permits registration nonetheless,” Justice Ginsburg wrote. “And the PTO fails to explain how the exclusive connection between a domain name and its owner makes the domain name a generic term all should be free to use. That connection makes trademark protection more appropriate, not less.”
Justice Stephen Breyer was the lone dissenter, arguing that the majority’s decision is “inconsistent with trademark principles and sound trademark policy.” He wrote: “By making such terms eligible for trademark protection, I fear that today’s decision will lead to a proliferation of ‘generic.com’ marks, granting their owners a monopoly over a zone of useful, easy-to-remember domains.”
Key Takeaway
The Supreme Court’s decision in United States Patent and Trademark Office v. Booking.com B.V. provides assurance to brand owners that the Trademark Office may not apply a per se rule to reject trademark applications for “generic.com” marks. Henceforth, each such trademark application must be evaluated to determine whether the applied-for term conveys a source-identifying meaning to consumers. The Court’s decision dramatically expands the availability of trademark protection for domain names. In addition, it significantly limits the number of such terms that will be deemed ineligible for trademark protection for being generic.
If you have questions, please contact us
If you have any questions or if you would like to discuss the matter further, please contact the Scarinci Hollenbeck attorney with whom you work, at 201-896-4100.
Let`s get in touch!
Sign up to get the latest from the Scarinci Hollenbeck, LLC attorneys!
