The Supreme Court Holds “generic.com” Terms Trademark Eligible in Landmark Decision

by Charlize Morgan, LL.M. Candidate, 2020

The Supreme Court held in an 8-1 decision, delivered by the late Justice Ginsburg, that the combination of a generic word and “.com” may be eligible for federal trademark registration.¹ The Court ruled “generic.com” marks are only generic and ineligible for protection when consumers in fact perceive them as merely identifying a class of products or services.² In this case, however, the Court noted the U.S. District Court for the Eastern District of Virginia found consumers did not recognize “Booking.com” as signifying an entire class of online hotel reservation services based on survey evidence, and that “[t]hat should resolve this case . . . .”³ Furthermore, the Court held, unlike other combinations of generic terms, “generic.com” marks are distinguishable because domain name ownership is necessarily exclusive and, therefore, less likely to create confusion.⁴

The Booking.com case arose from the USPTO’s denial of Booking.com’s applications to register four marks, each of which contained the term “Booking.com.”⁵ The USPTO concluded the term “Booking.com” was generic and thus ineligible for trademark protection.⁶ The TTAB affirmed, ruling “customers would understand the term BOOKING.COM primarily [sic] to refer to an online reservation service for travel, tours, and lodgings [sic].”⁷ It added that, alternatively, even if the term was descriptive rather than generic, it would not qualify for registration because of a lack of secondary meaning.⁸

On review, the U.S. District Court for the Eastern District of Virginia disagreed. The district court found instead the term was not generic because the “consuming public . . . primarily understands that BOOKING.COM does not refer to a genus, rather it is descriptive of services . . . available at that domain name.”⁹ The Court of Appeals for the Fourth Circuit affirmed the district court’s decision, rejecting the USPTO’s contention that “generic.com” terms are “necessarily generic.”¹⁰ The Supreme Court then granted certiorari to decide whether the addition of “.com” to an otherwise generic term, e.g., “booking,” sufficiently defeats genericness for the purpose of trademark eligibility.¹¹ The USPTO did not appeal the district court’s finding of consumer perception of “Booking.com.”¹²

In determining whether “Booking.com” is generic, the Court looked to whether the term, “as a whole, signifies to consumers the class of online hotel-reservation services.”¹³ Deferring to the factual record before it, the Court held that here, “Booking.com” did not refer to the class of online hotel-reservations services, because “[c]onsumers do not in fact perceive the term . . . that way . . . .”¹⁴ As a result, the Court held “Booking.com,” though comprised of two generic terms or words, is descriptive rather than generic.¹⁵

The Court rejected the USPTO’s “sweeping” rule that “when a generic term is combined with a generic top-level domain like ‘.com,’ the resulting combination is generic.”¹⁶ It rejected as flawed the USPTO’s contention that a “generic.com” per se bar flows from the common-law principle applied in Goodyear’s India Rubber Glove Manufacturing Company v. Goodyear Rubber Company, 128 U.S. 598 (1888).¹⁷  The cited principle states “a generic corporate designation added to a generic term does not confer trademark eligibility.”¹⁸ Here, the Court refused to extend this principle because only one entity can occupy a specific internet domain name at once, and the domain name may therefore convey a “source-identifying characteristic” to consumers.¹⁹ Furthermore, the Court held the USPTO’s proposed rule was inconsistent with the “bedrock principle of the Lanham Act”—i.e., “whether a term is generic depends on its meaning to consumers.”²⁰ The Court accordingly qualified the Goodyear principle to mean that a compound generic term, like “Booking.com,” is generic only “if the combination yields no additional meaning to consumers capable of distinguishing the goods or services.”²¹

The Court also found that the USPTO’s policy concerns surrounding protection of “generic.com” terms fell short. The USPTO’s concerns centered on the possible anticompetitive effects of granting a trademark holder a monopoly on generic language that should be freely available to others for use.²² This view is echoed in Justice Breyer’s dissent: “[b]y making such terms eligible for trademark protection, I fear that today’s decision will lead to a proliferation of ‘generic.com’ marks, granting their owners a monopoly over a zone of useful, easy-to-remember domains.”²³

The majority, however, dismissed such concerns, noting that other doctrines guard against such negative effects.²⁴ One is that, “[n]otably, a competitor’s use does not infringe a mark unless it is likely to confuse consumers.”²⁵ Another is the classic fair use doctrine, which would mitigate risks for competitors using the descriptive term in good faith.²⁶ In addition, the Court noted that possible competitive advantages and the presence of other means of protecting marks does not disqualify “Booking.com” from trademark registration eligibility, noting that the Court has “no cause to deny Booking.com the same benefits Congress accorded other marks qualifying as nongeneric.”²⁷

For these reasons, the Court rejects the USPTO’s proposed rule, adding that a per se bar against “generic.com” terms would open the floodgates to cancellation of many existing registered marks, such as “ART.COM” and “DATING.COM.”²⁸

In Booking.com, the Supreme Court makes clear consumer perception of “Booking.com” should itself have been determinative of the case, emphasizing the significance of consumer perception evidence in determining trademark eligibility.²⁹ The decision thereby reiterates the underlying principle of the Lanham Act³⁰ and ensures trademark law’s continued reflection of the real world and connection to relevant factual context.