Domains as Brands – Implications of U.S. Patent and Trademark Office v. Booking.com B.V.

The Supreme Court has settled the issue of whether domain names, including a top-level domain name (TLD) such as “.com,” may be protected as registered trademarks thanks to its recent decision in U.S. Patent and Trademark Office v. Booking.com B.V. There, Booking.com challenged the PTO’s decision that the mark “Booking.com” was generic and therefore unregistrable. In a June 30 opinion written by Justice Ruth Bader Ginsburg, the Court held that because Booking.com has become a term that is not generic as to source for consumers, it is not generic. The Court further declined to adopt the PTO’s plea for a per se rule that combining a generic term with a “generic top-level domain like ‘.com’” should result in a generic combination. By implication, the Court has opened the door for the registration of any domain name that has achieved a similar level of source recognition with consumers—thus affording additional protection for businesses looking to incorporate a domain name in their branding.

Background:

Booking.com is a travel company that offers online booking services for flights, rental cars, hotel reservations and the like. It attempted to register four marks containing the term “Booking.com.” Facing rejections from the PTO examining attorney and the TTAB on the basis that the mark is generic, Booking.com appealed to federal district court. Citing evidence that consumers viewed the term “Booking.com” as non-generic, the District Court reversed and found the term descriptive, but that it had acquired distinctiveness and was therefore registrable. The PTO appealed only the District Court’s determination that “Booking.com” is not generic. The Fourth Circuit affirmed, and then the PTO petitioned the Supreme Court for review.

The Supreme Court:

The Court framed the two issues of the case as (1) whether “Booking.com,” when taken as a whole, “signifies to consumers the class of online hotel-reservation services” and (2) whether to adopt a “nearly per se rule” that “when a generic term is combined with a generic top-level domain like ‘.com,’ the resulting combination is generic.”

Addressing the first issue, the Court noted, “if ‘Booking.com’ were generic, we might expect consumers to understand Travelocity—another such service—to be a ‘Booking.com.’” The Court continued, “[w]e might similarly expect that a consumer, searching for a trusted source of online hotel-reservation services, could ask a frequent traveler to name her favorite ‘Booking.com’ provider.” The lower courts determined that “[c]onsumers do not in fact perceive the term ‘Booking.com’ that way,” the Court thus sharply concluded that “[t]hat should resolve this case: Because ‘Booking.com’ is not a generic name to consumers, it is not generic.” In other words, because Booking.com acts as a source identifier, it is not generic.

On the second issue of a per se rule, the Court stated that the “PTO’s own past practices appear[] to reflect no such comprehensive rule,” as the Court noted that the PTO has granted other “generic.com” marks to the principal and supplemental registers, such as “art.com” and “dating.com.”

The Court also rejected the PTO’s argument that “Generic.com” is like “Generic Company” and that merely adding a “‘.com’ to a generic term . . . conveys no additional meaning.” Rebutting this claim, the Court responded that a ‘“generic.com’ term might also convey to consumers a source-identifying characteristic: an association with a particular website.” Indeed, operative domain names resolve to a particular webpage as directed by the owner.

The Court went on to reject the PTO’s argument that permitting exclusive use of the mark would allow “undue control over similar language . . . that others should remain free to use.” Dismissing this, the Court noted that this is true of “any descriptive mark” and that there cannot be trademark infringement absent consumer confusion.

Lastly, in refusing to hold that generic.com terms are per se generic, the Court stated that “[w]hile we reject the rule proffered by the PTO that ‘generic.com’ terms are generic names, we do not embrace a rule automatically classifying such terms as nongeneric.” The Court then promulgated the following critical rule: “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.” In other words, a term must act as a source identifier such that consumers associate that term with the source, not the class.

Ramifications:

The Court’s opinion is welcome news for any company seeking a new line of branding. The Court was clear: any generic term can be combined with “.com” and that combination can receive trademark protection as long as it acts as a source identifier. Thus, if the “term is capable of distinguishing among members of the class,” it is not generic.

Now is the time for any company with a “.com” name to reassess brand strategy. With the right evidence of acquired distinctiveness, federal trademark protection is available. In fact, the Court’s opinion has already opened the door for a new wave of “.com” marks. As of recent count, nearly 200 “.com” applications have already been filed since the Court’s June 30 opinion.