Supreme Court Rules That Potentially Generic Internet Domain Names May Nonetheless Be Entitled to Trademark ProtectionJuly 1, 2020
On June 30, 2020, the United States Supreme Court ruled in United States Patent & Trademark Office v. Booking.com B.V. that it was improper for the United States Patent and Trademark Office (“USPTO”) to categorically deny trademark protection to website domain names of the form “generic.com.” Rather, where there was evidence that consumers use an otherwise generic domain name to distinguish between similar goods and services, that domain name may still be eligible for trademark protection.
What is a "Generic" Trademark?
To understand the Supreme Court’s ruling, one must first recognize that trademarks are a form of intellectual property used to distinguish one’s goods and services from another’s. Trademarks can be words, phrases, symbols, or designs. In the United States, trademarks do not need to be registered, but registration with the USPTO can provide a stronger means of protection from infringement by others on a nationwide basis.
Since trademarks are used to distinguish goods and services, a potential trademark must be “distinctive.” This distinctiveness has been described along a spectrum, where “fanciful” or made-up terms are the most clearly distinctive, such as Clorox® bleach or Exxon® fuel. Somewhat less distinctive on the scale are “arbitrary” marks, which are words that already have a clear meaning, but may lack a specific connection to the good or service provided, including, for example, the fruit name apple vs. Apple® computers or the game dominos vs. Dominos® pizza. “Suggestive” marks can be even less distinctive, allowing a consumer to guess the good or service based upon the name (such as Crayola® crayons or Chicken of the Sea® tuna). Notably, even “descriptive” marks – words that literally describe the good or service (such as Sharp® televisions or American Airlines®) – can be registered once the owner proves that the mark has acquired distinctiveness, meaning that the marketplace identifies the mark with a single source.
The one type of mark that can never be registered is a “generic” mark. This mark does nothing to distinguish goods or services but instead is the definition of the goods or services themselves. For example, the USPTO would never permit someone to register just “Laundry Detergent” for laundry detergent itself, because that would exclude others from using the very words that define the goods. Likewise, one could not register only “Roofing Services” for the category of roofing services.
Booking.com is one of several travel and accommodations websites where someone can book hotels, flights, and car rentals. In 2011, the parent company of Booking.com sought trademark protection for the website name in a crowded internet travel industry. The USPTO denied protection, concluding that “Booking.com” was generic, because “booking” generically meant “travel reservations” and “.com” merely illustrated a commercial website.
Booking.com’s case was ultimately appealed to the United States Supreme Court. In a nearly unanimous ruling, the Supreme Court stated that compound terms (like “Booking.com”) are evaluated by the term’s meaning as a whole, and that the relevant meaning of a term is its meaning to the consuming public. Thus, the question of whether “Booking.com” was generic was based upon whether the term, as a whole, would represent the class of online reservation services to the consumer population. The Court asked whether a consumer would view Travelocity as one of many “Booking.coms.” The Court concluded that was not the case, and therefore the term was not generic. The Court then found that “Booking.com” had acquired “secondary meaning” within the realm of online reservation services, sufficient to be deserving of trademark protection as a “descriptive” mark.
While this finding is beneficial to the owner of “Booking.com,” the Court went further, noting that the USPTO’s rule of denying protection of terms in the form of “generic.com” was not consistent with their prior practice, as the USPTO had granted protection for websites like Art.com and Dating.com in the past. The Court made clear that such a categorical rule was improper, and instead would require an examination of the term as a whole and whether the term had “secondary meaning” with consumers.
Notably, the ruling is helped by one fundamental aspect of domain names – they can be only occupied by one entity at a time, and thus can be associated with only that particular entity. The exclusivity that results from a given domain name is arguably different from prior cases involving the addition of the word “Company” (e.g., “Generic Company”), which likely is not exclusive and may do little to remove the generic status of the term. Even “Generic Company” may be eligible for protection where the compound term connotes meaning to consumers in a manner that distinguishes goods and services between entities. The Court likewise rejected the USPTO’s view that terms like “Generic Company” were per se ineligible for trademark protection.
The result of the ruling in Booking.com may be a flood of requests for trademark protection for website names not currently protected by federal registration. Further, website domain owners may expect an increase in domain-name litigation between registered trademark owners and domain names without such protection. To be sure, the decision here will change the trademark landscape with respect to website domain names and potentially company names for years to come. If you want to explore trademark registration, or are concerned about trademark infringement, or just wish to learn more about how trademarks can expand your intellectual property portfolio, contact a lawyer in the Lewis Rice Intellectual Property group for assistance.