Can placing .com at the end of a generic term turn the term into a source-identifier that is capable of being afforded trademark protection? That is the question that will be decided by the Supreme Court later this year in USPTO v. Booking.com, case number 19-46.
It has been a long standing precedent that generic terms cannot be trademarked. The principle behind this precedent is that awarding a trademark to a generic word effectively takes it out of use for everyone else with respect to the cited goods/services. For example, case law has held that someone could not use a generic word and put “Inc.” after it to create a monopoly to stop others in the United States from using that word.
And now, along comes the internet and the .com revolution. Booking.com contends that some terms that would otherwise be generic can be used as a source-identifier. For example, when a top level domain such as .com is added to the generic term. This reasoning is supported by domain names being registered to a single user and having a unique location. The United States Patent and Trademark Office (USPTO) disagrees. Their position is that the mere addition of .com does not save the term from being generic and thus ineligible for trademark protection.
History of the Case
Booking.com filed for a trademark on its’ name in 2017 in the USPTO. The USPTO refused registration based on the name being generic with reference to booking hotels and flights. Subsequently, the case was appealed to the Trademark Trial and Appeal Board which upheld the Examiner’s decision that adding .com to the end of a generic term does not transform the term into a source-identifier that can be afforded trademark protection.
After appealing the Trademark Trial and Appeal Board decision, a Federal District Court judge overturned the decision. In that decision, the District Court held that the addition of .com can transform a term into source-identifier to consumers. Subsequently, the USPTO appealed to the Fourth Circuit Court of Appeals, which affirmed the District Court decision. Ultimately, in November 2019, the parties appealed and the Supreme Court granted certiorari to hear the case.
In January and February of this year, 15 amicus briefs have been filed by various parties. Of those briefs filed, 12 supported Respondent Booking.com. Two briefs did not support either party and only 1 brief supported the USPTO. Those filing briefs in support of Respondent Booking.com include The Intellectual Property Owners Association, The International Trademark Association, The Internet Commerce Association, The Boston Patent Law Association, The Intellectual Property Law Association of Chicago, The New York Intellectual Property Law Association, Survey Scholars and Consultants, among others.
In conclusion, the number of briefs supporting Booking.com may indicate where the inclination of the public lies. However, what about the Supreme Court? Will they find that the internet has effectively created a new trademark right in previously regarded generic terms by appending the term with .com? Alternatively, will they find that generic is generic and adding .com does not transform the generic term into a source-identifier? Whatever the ruling, it will be a landmark decision shaping trademark law for years to come.