U.S. Supreme Court Rules “Generic.com” Trademarks May be Trademarkable

https://www.iniplaw.org/wp-content/uploads/sites/366/2020/10/Booking.com-Logo-300x76.pngWashington, D.C.– A travel-reservation website, Booking.com, filed federal trademark applications for a number of marks including the term “Booking.com.” After being examined, the U.S. Patent and Trademark Office (“USPTO”) refused registration for the mark on the grounds it was a generic name for online reservation services.

However, the District Court, the Fourth Circuit, and the U.S. Supreme Court all found “Booking.com” should be granted registration even though the term “booking” on its own would be generic. The Courts reasoned that because only one entity can occupy an internet domain name at one time, consumers could associate a term styled as “generic.com” with a particular website and source of services.

While the USPTO also argued that allowing trademark protection for “Booking.com” could inhibit competitors from using the term “booking,” the Supreme Court cited multiple doctrines that guard against anticompetitive effects. Those doctrines ensure that a registration for terms such as “Booking.com” would not give the registrant a monopoly on the term “booking.” Therefore, the Supreme Court declined to rule in a manner “that would largely disallow registration of ‘generic.com’ terms and open the door to cancellation of scores of currently registered marks.”

Associate Justice Ruth Bader Ginsburg delivered the opinion for the Supreme Court of the United States, Case No. 19–46.

U.S. Supreme Court Opinion

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