In United States PTO v. Booking.com B.V., the U.S. Supreme Court ruled that domain names combining a generic term and a top-level domain, such as ".com," can be eligible for federal trademark protection if consumers perceive the term as identifying a specific business. The decision rejected the Patent and Trademark Office's (PTO) categorical rule that such combinations are per se generic and ineligible for trademark registration.
Booking.com sought to register the term "Booking.com" for its travel reservation services. The PTO rejected the application, concluding the name was generic for online hotel booking. The Trademark Trial and Appeal Board affirmed, reasoning that "booking" is generic and ".com" merely indicates a commercial website.
Booking.com challenged the decision in federal court and introduced new evidence, including a consumer survey showing that a significant majority of consumers recognized "Booking.com" as a brand. The district court found the term was descriptive rather than generic and had acquired secondary meaning. The Fourth Circuit affirmed.
The Supreme Court, in a majority opinion authored by Justice Ginsburg, affirmed the lower courts. The Court emphasized that the key question in determining whether a term is generic is how consumers perceive it. A term like "Booking.com" is only generic if consumers understand it to refer to an entire class of services rather than to a particular provider.
The Court rejected the PTO's argument that ".com" terms are automatically generic, noting that domain names are unique and that consumers may associate a specific "generic.com" term with a single source. The Court found that consumer perception—not a categorical rule—determines eligibility for trademark protection.
The PTO had relied on an 1888 case, Goodyear's India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., where the Court held that adding "Company" to a generic term did not create a protectable trademark. However, the Supreme Court distinguished that precedent, noting that domain names carry exclusivity not shared by corporate designations like "Company." Because only one entity can own a domain like "Booking.com" at a time, the domain may convey source-identifying meaning.
Addressing policy concerns, the Court clarified that granting trademark protection to "Booking.com" would not give the company a monopoly on the term "booking." Trademark law already includes safeguards such as the likelihood-of-confusion standard and fair use doctrine to prevent anticompetitive effects.
Justice Sotomayor concurred, emphasizing that while survey evidence can be informative, it is not the sole basis for determining consumer perception. Justice Breyer dissented, warning that allowing "generic.com" trademarks could grant undue competitive advantages to early domain name registrants.
Trademarks combining generic terms and domain suffixes may still qualify for federal protection if they acquire distinctiveness in the marketplace. Our attorneys at Whitcomb, Selinsky, PC assist clients in navigating trademark registration challenges and protecting distinctive brand identities online and offline.