The US Supreme Court recently resolved a decades-long legal question by holding that “Booking.com” is eligible for trademark registration. See USPTO v. Booking.com B.V., Case No. 19-41 (June 30, 2020). At issue was whether adding an internet domain name extension could convert an otherwise generic or merely descriptive word into something that could be trademarked. In the past, the answer has been “no.” Now, the answer is “yes, maybe.”

Trademarks are words, logos, designs, symbols or other marks that identify a unique commercial source of goods and services. To function as a trademark, the word or symbol or design must be strong enough to create an impression in the minds of consumers. For this reason, typically, a generic or descriptive word or phrase will not be eligible for trademark registration. This is the rule set out by the federal trademark statute, the Lanham Act, 15 U.S.C. 1051, et seq.

Trademarks are registered by the US Patent & Trademark Office (“USPTO”). The USPTO has rules and regulations that prohibit registration of generic and descriptive words/phrases as trademarks. Thus, the word BOOKING could not be registered as a trademark by the USPTO because it is too generic and descriptive.

Over the last couple of decades, various individuals and businesses have tried to override this general principle by adding domain name extensions to generic, common and/or descriptive words. The USPTO has rejected these efforts and has denied trademark registration applications for website names like HOTELS.COM, LAWYERS.COM and similar. The USPTO has taken the position that adding a domain name extension does NOT convert an otherwise generic, common or descriptive word/phrase into something unique and distinctive. For many years, courts agreed with the USPTO’s position.

Based on these legal principles, the USPTO rejected efforts to register BOOKING.COM as a trademark.

Following the USPTO’s refusal of registration, the owner of BOOKING.COM appealed to the relevant federal district court. In a surprise decision, the district court ruled in favor of Booking.com B.V. and ordered the USPTO to register BOOKING.COM. The USPTO took an appeal, and, in another surprise, the federal Court of Appeals for the Fourth Circuit affirmed the district court. See Booking.com B.V. v. USPTO, 915 F. 3d 171 (4th Cir. 2019). The Fourth Circuit panel (in a 2-1 decision) held that adding a domain name extension DID, in fact, convert the generic and descriptive word into something unique. By adding the domain name extension, the single generic word became a compound distinctive concept eligible for trademark registration.

Now, as noted, the US Supreme Court has affirmed the Fourth Circuit’s decision. However, the Supreme Court did not impose a rigid rule that adding a domain name extension automatically creates a trademarkable word or phrase. Rather, the Supreme Court held that the USPTO must evaluate trademark eligibility based on the USPTO’s standards with respect to consumer perceptions.

In this case, the court held that the undisputed facts showed that, in consumers’ minds, “BOOKING.COM” was distinctive in that it identified a particular commercial source for finding and making hotel and travel reservations. According to the evidence, consumers perceived BOOKING.COM as a unique brand like TRAVELOCITY, a competing travel reservation website. For the court, this was evidence of distinctiveness and trademarkability.

Furthermore, the evidence showed that consumers did not — and do not — use the combination “booking-dot-com” as a general description for travel and hotel reservation services. Consumers use the stand-alone word “booking,” not the combination. This was more evidence of distinctiveness. Finally, the court noted that consumers generally understand that only one business can be located at a given domain name. As such, almost by definition, the word combination BOOKING.COM identifies a unique commercial source of certain goods and services. Since identifying a unique commercial source is the main function of a trademark, then BOOKING.COM serves as a trademark. Taken as a whole, the evidence showed that BOOKING.COM was distinctive and eligible for trademark registration.

For more information or if you have questions about creating and registering a trademark, contact the trademark lawyers at Revision Legal at 231-714-0100.

The Spectrum of Distinctiveness and Why It Matters

Trademark law organizes marks along a spectrum of distinctiveness. Fanciful marks—invented words like XEROX or KODAK—are the strongest and eligible for registration automatically. Arbitrary marks, existing words applied to unrelated goods like APPLE for computers, are also strong. Suggestive marks hint at a quality of the goods without describing them directly. Descriptive marks require proof of secondary meaning—evidence that consumers associate the term with a specific commercial source—before they can be registered. Generic terms, the common name for the goods or services themselves, can never be registered regardless of secondary meaning.

The USPTO’s longstanding position was that adding .com to a generic term could not elevate it out of the generic category because no single entity can monopolize a generic term, and .com merely signals that a business has a web presence. The Court’s rejection of this categorical rule does not mean that all generic-word.com combinations are now registrable. It means the USPTO must conduct a consumer-perception inquiry rather than applying an automatic rule.

Consumer Survey Evidence After Booking.com

The dispositive evidence in USPTO v. Booking.com was a consumer survey showing that the public associated BOOKING.COM with a specific company, not with the general concept of online booking services. Justice Ginsburg’s majority opinion emphasized that the relevant question is always how consumers understand the term in context. This places a premium on consumer survey evidence in trademark applications for descriptive or potentially generic terms.

Post-Booking.com, trademark applicants seeking to register potentially generic or descriptive .com combinations should commission survey evidence demonstrating that consumers perceive the mark as a brand identifier for a specific source rather than as a generic descriptor. The Teflon survey methodology—asking consumers whether a given term is a brand name or a common name—is commonly used for this purpose.

Monitoring and Enforcement Implications

A registered trademark carries the right to use the registered symbol, creates a rebuttable presumption of ownership and validity in litigation, and enables the owner to pursue infringement claims in federal court with access to statutory damages and attorneys’ fees. Registration also enables enforcement through U.S. Customs and Border Protection against counterfeit goods, supports UDRP complaints against cybersquatters who register confusingly similar domain names, and creates a record against which the USPTO will cite when examining applications for confusingly similar marks. Online marketplace brand registries—including Amazon’s Brand Registry and eBay’s VeRO program—typically require a trademark registration number to initiate takedown of infringing product listings.

Limits of the Decision

The Booking.com decision’s scope has limits that practitioners should understand clearly. The Court did not hold that consumer perception evidence automatically overcomes a generic finding. For truly generic terms, no survey showing secondary meaning will result in registration because the public interest in keeping generic terms available overrides any particular company’s brand investment. The decision applies to the intermediate category: terms that are arguably descriptive or that sit at the borderline between descriptive and generic, where consumer perception can tip the balance.

The Court also emphasized the narrowness of trademark rights in these marks. A company that succeeds in registering a generic.com combination receives a relatively thin mark—one that can be used by competitors in descriptive ways, that may be difficult to enforce against minor variations, and that will require ongoing use and renewal filings to maintain. Trademark strategy for these marks should account for the inherently weaker protection they confer compared to fanciful or arbitrary marks.

If you have questions about trademark eligibility, registration strategy, or enforcing your trademark rights online, contact the trademark lawyers at Revision Legal at 231-714-0100.