In an 8-1 decision released on June 30th, 2020, the Supreme Court of the U.S. (SCOTUS) affirmed the decision of the Court of Appeals for the Fourth Circuit that “Booking.com” is eligible for trademark registration.
SCOTUS held that adding “.com” to a generic term does not per se result in a generic term. Looking to the principles of the Lanham Act, Justice Ginsburg emphasized the importance of consumer perception in deciding the generic character of a term. Here, the district court found that consumers did not find “Booking.com” to be a generic term. The appellate court affirmed, finding no error in the district court’s assessment. SCOTUS agreed, rejecting the argument that adding “.com” to a generic term can convey no source-identifying meaning, and concluding that “Booking.com” is not a generic name to consumers.
Given that only one entity can occupy an internet domain at a time, SCOTUS found that consumers may associate a particular website with an entity. SCOTUS also rejected the PTO’s arguments that internet domain owners have existing competitive advantages and that other remedies exist outside of trademark law on the grounds that no basis exists to deny them benefits accorded to other non-generic terms.
A link to the Staas & Halsey LLP 2020 Spring Newsletter which discusses the oral arguments presented by telephone before the Supreme Court of the U.S. in United States Patent and Trademark Office v. Booking.com is provided below.