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Supreme Court Holds is Eligible for Trademark Registration

By John DiGiacomo

The US Supreme Court recently resolved a decades-long legal question by holding that “” is eligible for trademark registration. See USPTO v. 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 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 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.

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