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The U.S. Supreme Court recently clarified certain trademark rights for “.com” trademarks in a landmark decision in United States PTO v. Booking.com B.V. There, the High Court ruled 8-1 that Booking.com, a popular online travel reservation agency, could register its company name – BOOKING.COM – as a trademark. In doing so, the Supreme Court struck down the U.S. Patent and Trademark Office’s “per se” rule, which rendered nearly all combinations of a generic name and a domain name extension, such as “.com,” as generic and ineligible for trademark registration. The decision was a victory for Booking.com, given that the USPTO had previously rejected the company’s four trademark applications, finding the marks to be generic. This ruling provides more opportunity to protect brands and marks through trademark protection for companies that have generic term combinations.

Authors: Sarah L. Bruno Justine Lee

In the case, both the USPTO and Booking.com agreed that “booking” is a generic term that many other reservation websites use. However, the issue in United States PTO v. Booking.com B.V. turned on whether the combination of a generic term and “.com” renders a company name ineligible for federal trademark registration. In 2016, the Trademark Trial and Appeal Board affirmed the trademark examining attorney’s denial of Booking.com’s trademark applications and held that “BOOKING.COM” was merely descriptive and lacked acquired distinctiveness. Booking.com challenged this decision in the U.S. District Court for the Eastern District of Virginia.

Siding with Booking.com, the district court ruled that the company had shown its name was not generic. It based that decision on Booking.com’s extensive nationwide advertising campaign, as well as evidence of surveys; “robust consumer sales; voluminous unsolicited media coverage; and a decade of exclusive use.” Booking.com v. Matal, 278 F. Supp. 3d 891, 923 (E.D. Va., 2017). The court stated that the evidence was more than sufficient to demonstrate that “in the minds of the public, the primary significance of ‘BOOKING.COM’ is to identify the source of the product rather than the product itself,” …and that “plaintiff's mark is entitled to protection for the services identified in Class 43, as a descriptive mark.” Id. The court ordered the USPTO to register two of Booking.com’s four trademark applications and remanded the other two.

In response to this order, the USPTO appealed this ruling to the Fourth Circuit.

The Fourth Circuit affirmed and maintained the company’s claim to trademark rights for BOOKING.COM. The holding stated that the trademark BOOKING.COM, as a whole, refers to “the company” and not to “general online hotel reservation services.” The court also rejected the USPTO’s argument that a combination of a generic name and “.com” could “never yield a non-generic mark.” Booking.com B.V. v. United States Patent and Trademark Office, 915 F.3d 171, 184 (4th Cir., 2019).