The U.S. Supreme Court held that the addition of “.COM” to a generic word could function as a protectable trademark, despite the generic word being incapable of acting as a protectable trademark. While this decision opens the door for brands like BOOKING.COM to potentially qualify for trademark protection, proving those rights could be incredibly difficult and any resulting rights with likely be narrow in their scope.
The USPTO Initially Denied ‘Booking.com’ as a Generic Word or Phrase
Under the U.S. trademark law (the Lanham Act,) generic words are not provided trademark protection and can never act as a trademark. A generic word is, in general, the basic name of a product or service – “automobile” for a car, “motor oil” for a motor lubricant.
The USPTO examining attorney assigned to the BOOKING.COM trademark application found that BOOKING.COM was generic and incapable of trademark protection. The examining attorney found that “BOOKING” was generic for a website that offered hotel booking services. The examining attorney then found that the additional of “.COM” did not change the generic nature of the word BOOKING.
The applicant, however, believed that through its extensive use, advertisement, and public recognition of BOOKING.COM, it had acquired the recognition necessary to obtain trademark protection and appealed the decision.
The Supreme Court Overturned the USPTO Decision, Stating that the Addition of .COM Was Sufficient to Overcome the Genericness Refusal
In an 8-1 decision, the Justices held that adding “.com” to a generic word can make the entire phrase eligible for trademark protection if the entire phrase is a recognized brand that meets the requirements of consumer recognition necessary to support trademark protection – a phrase often called “acquired distinctiveness.”
However, proving acquired distinctiveness can be extremely difficult – while the court found that BOOKING.COM met this threshold, providing distinctiveness in a highly descriptive trademark can be very difficult.
The Decision is Unlikely to Affect Most Brand Owners
Overall, the Booking.com decision will not affect most trademark owners who do not use generic words with generic top-level domains (sometimes called gTLDs). However, for some brands with significant recognition– like Booking.com, Hotels.com, Pets.com, etc. – this may open the door for protection that they otherwise would not have access to.
If a trademark owner owns a domain name like this, then significant evidence would be required to prove the popularity, or “distinctiveness”, of the mark. The Booking.com decision does not entitle every “generic.com” to instantaneous trademark protection. Trademark owners will still need to prove that they have rights. For example, Booking.com was required to provide evidence of the public understanding that the phrase in its entirety has the “capacity to ‘distinguis[h]’ goods ‘in commerce.’”
Since this decision, there has been an increase in generic “.com” trademark applications with the USPTO. For example, “Jerky.com” filed for a trademark in 2017, but was denied for being generic. According to the Supreme Court’s recent ruling, this mark should not be considered generic. However, it is definitely descriptive, and it will be up to the USPTO examining attorney, who is given significant discretion in this, to decide whether the Jerky.com provides sufficient evidence to show acquired distinctiveness.
Since the Supreme Court’s decision did not review or set the criteria for how much evidence is enough to prove acquired distinctiveness, the bar might be set impossibly high for any practical protection of anything but the most recognizable names.