After filing applications with the U.S. Patent and Trademark Office (USPTO) nearly eight years ago, Booking.com, the travel registration website known for its punny commercial tagline, celebrated victory on June 30, 2020. In an 8-1 decision, the U.S. Supreme Court found that the trademark BOOKING.COM is not generic, and therefore eligible for registration.
Trademarks serve as source identifiers – they indicate the source of the goods or services with which the mark is used. Thus, U.S. trademark law prohibits registration of terms that are considered “generic.” Generic terms are those that name the class of goods or services themselves, such as “wine,” “wood,” or, as argued by the USPTO, “booking.” This prohibition is meant to prevent a trademark owner from claiming a monopoly over words necessary for others to identify their goods or services. Likewise, marks that merely describe an element, characteristic, function, or feature of the goods or services, such as RAPID TRAVEL, are considered “merely descriptive,” and are usually denied registration on the Principal Register. However, a descriptive mark may be registered on the Principal Register (and entitled to trademark protection) should the applicant be able to prove the mark has acquired secondary meaning. A descriptive mark has acquired secondary meaning when consumers associate the mark with the source of the goods or services. A generic term, on the other hand, can never acquire secondary meaning.
The USPTO rejected a series of BOOKING.COM trademark applications on the basis that the generic word “booking,” coupled with the generic top down level domain name “.com,” created a complete generic term ineligible for registration. Booking.com argued that the combination was instead merely descriptive, and was at least eligible to be considered for registration. Both the Eastern District of Virginia and the Fourth Circuit Court of Appeals sided with Booking.com, holding that the combination of the word with the domain name was descriptive at best, and therefore could be registered upon proof that it has acquired secondary meaning.
The Supreme Court agreed with the lower courts, holding that, where consumers do not consider the combination of a generic word with a generic domain as identifying that class of goods and services, the combination is not generic. In other words, genericness requires an examination of the term as a whole (BOOKING.COM) rather than the terms “BOOKING” and “.COM” in isolation. The court pointed out that, if BOOKING.COM were a generic term, consumers would understand other travel booking services to be a “Booking.com.” Instead, consumers consider the mark to merely describe the type of services rendered: travel registration services accessible over the internet. However, the court cautioned that “generic.com” terms are not automatically classified as non-generic:
“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.”
Interestingly, the court also drew attention to the fact that there were already other “generic.com” marks registered by the USPTO prior to Booking.com, such as ART.COM and DATING.COM. Other examples include WINE.COM, and CARE.COM, as well as other travel-related sites, such as HOTELS.COM and FLIGHTS.COM. A contrary ruling by the court would have put those registrations at risk of cancellation.
Booking.com’s case demonstrates the need for careful consideration of website addresses as part of brand development and protection strategy. A business should consider timely acquisition of appropriate domain names early in its brand development, particularly if the brand will include a “generic.com” combination. While the generic term itself is not protectable as a trademark, over time the “generic.com” name may become protectable. Failure to secure the proper domain name early on will likely prevent the business from building, over time, the necessary consumer recognition between that domain name and the goods or services.
