For the second time in just over a month, the Supreme Court of the United States (SCOTUS) decided a trademark case. Yesterday, in a landmark decision, the Court ruled that Booking.com is not a generic trademark. In 2012, Booking.com’s Dutch parent company filed a series of US trademark applications with the USPTO. The trademark Examining Attorney refused the marks from registering due to the marks being generic. Booking.com ultimately appealed the refusal through the federal court system, with the district court and the 4th Circuit siding with the Dutch company against the USPTO. Now, SCOTUS issued a final ruling affirming the 4th Circuit, holding that Booking.com is not generic.
As the Court explains, the more distinctive a mark, the stronger the protection under trademark law. For example, arbitrary marks receive the strongest trademark protection, since consumers can easily determine source origins from coined words. On the opposite end of the spectrum, generic trademarks are typically ineligible for registration. Consumers cannot distinguish a source identifier from the generic mark; as such, the marks cannot be considered distinct enough for protection.
Top-Level Domain: Generic like a Company Designation?
The USPTO argued that the “combination of a generic word and ‘.com’ is generic”. As such, the USPTO likened a top-level domain to a company designation, such as Corporation or LLC. Supreme Court precedent from 1888 stated that the addition of “Company” to a mark (in that case, GOODYEAR RUBBER COMPANY) failed to create distinctiveness. Justice Breyer’s dissent focused on that precedent, arguing that Booking.com simply denotes a generic service provided online.
However, the majority of SCOTUS (8-1 decision, penned by Justice Ginsburg) disagreed with the USPTO. Instead, according to the majority, “A term styled ‘generic.com’ is a generic name for a class of goods or services only if the term has that meaning to consumers”. Further, the Court decided that top-level domains must be considered together with the website name itself, as a composite mark. Accordingly, if consumers would recognize a source origin from the entire mark, the top-level domain can be registered.
Takeaway: How to Register a Top-Level Domain
Prior to this case, top-level domains added little to a trademark. However, now the floodgates to registering top-level domains may be open, to an extent. A trademark owner likely must prove a sort of secondary meaning of consumer recognition of the mark, such as by consumer surveys.
While the Court decided Booking.com is not generic and is eligible for registration, the long-term effects may not be much different from the current trademark landscape. Booking.com directs its marketing campaigns to the composite mark itself, hoping that consumers type “booking.com” into a browser search bar. However, searching on the internet increasingly occurs via search engine keywords, not through direct connections to a website. As such, the floodgate may not be as much of a floodgate as it is a much smaller valve, since top-level domains are losing significance each year.