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The Power of .com in Securing Federal Trademark Rights

On June 30, 2020, the United States Supreme Court, in an opinion authored by Justice Ginsburg in “United States Patent and Trademark Office v. Booking.com B.V.,” decided that “Booking.com” was a name that was eligible for federal trademark registration. In doing so, the Court rejected the United States Patented Trademark Office’s (USPTO) “nearly per se rule” and instead held that the proper standard of whether a 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.”

To be eligible for trademark registration under the Lanham Act, a mark must be sufficiently “distinctive” meaning that “the goods of the applicant may be distinguished from the goods of others.” “Distinctiveness,” should be viewed on a spectrum. On one end are the most distinctive marks, “arbitrary” (‘Camel cigarettes’), ‘fanciful’ (‘Kodak’ film), or ‘suggestive’ (Tide laundry detergent).” [1]. On a lower part of the spectrum are “descriptive” marks, which by themselves are not eligible for trademark registration. Instead, the mark must have acquired distinctiveness, meaning that “in the minds of the public,” the mark is significant. Finally, the lowest portion of the “distinctive” spectrum is “generic.” This refers to marks such as the name of the good itself (e.g. “wine”).

Though the word “booking” on its own would likely fall into the generic portion of the distinctiveness spectrum, adding “.com” pushes the mark to “descriptive.” As the Court explained, “whether ‘Booking.com’ is generic turns on whether that term, taken as a whole, signifies to consumers the class of online hotel-reservation services.” Thus, the Court would need to make a finding that consumers construe “booking.com” to represent not one hotel reservation service, but instead the class of hotel reservation services. The Supreme Court stated simply that they accepted the lower court’s findings that consumers do not perceive “Booking.com” in this manner, and as such, “Booking.com” is not generic. On this finding alone, the Court found this case could be resolved.

The PTO disagreed, and attempted to argue for the following rule,

“when a generic term is combined with a generic top-level domain like “.com,” the resulting combination is generic. In other words, every “generic.com” term is generic according to the PTO, absent exceptional circumstances.”

The PTO advocated for this rule relying on the same line of logic of the matter of, “Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co.” In the PTO’s argument, that case stands for the proposition that adding the word “company” to a generic word does not confer trademark eligibility. The PTO argued that the word “company” and “.com” should be treated exactly the same.

The Court soundly rejected this argument, pointing out that only one entity may occupy a particular domain name, unlike adding the word “company” or “incorporated”. Thus, adding “.com” infers to consumers that this is a “specific entity.” Additionally, the Court found that the rule from the Goodyear’s case (referenced above) as articulated by the PTO was mistaken. The Court explained, “Instead, Goodyear reflects a more modest principle, harmonious with Congress’ subsequent enactment: A compound of generic elements is generic if the combination yields no additional meaning to consumers capable of distinguishing the goods or services.”

What is crucial to note, is that the Court did not instead adopt another “per se” rule, that adding “.com” to the end of a generic word will always guarantee trademark registration eligibility for the mark. Instead, the Court would require parties to show evidence that the public would in fact see that mark as “distinguishing.” To make this determination, the Court stated that the type of evidence to be considered should be “consumer surveys, . . . dictionaries, usage by consumers and competitors, and any other source of evidence bearing on how consumers perceive a term’s meaning.”

[1] Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 210–211, 120 S.Ct. 1339, 146 L.Ed.2d 182 (2000).

For any questions about the case or how to handle your trademark strategy, please contact our office below.

This article was written by Emilio E. Rodriguez, Legal Intern for Assouline & Berlowe PA (under the direction of Partner Greg Popowitz). Emilio is a student at the University of Miami Law School.


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