On June 30, 2020, the Supreme Court of the United States decided United States Patent and Trademark Office, et al. v. Booking.com B. V., No. 19-46, holding that a generic term, like “Booking,” combined with “.com” does not necessarily yield a generic name unprotected by the Lanham Act.
Booking.com is an online company that provides booking services for hotel and other travel reservations. It does business under the brand “Booking.com,” which also serves as the domain name of its website. Booking.com sought to register marks with the United States Patent and Trademark Office (PTO) containing the term “Booking.com.” But the PTO concluded that the term “Booking.com” is generic for travel services and therefore cannot be registered. In the PTO’s view, “booking” means making travel reservations and “.com” signifies a commercial website. Even taken together, the PTO held, the terms would not gain additional meaning in the mind of consumers.
The Lanham Act permits an applicant to seek review of PTO determinations in United States district courts and, in doing so, to introduce evidence not presented to the PTO. See 15 U.S.C. § 1071(b). Booking.com did so, and the district court held, based in part on Booking.com’s new evidence of consumer perception, that “Booking.com” is not generic. The court found that consumers primarily understand that Booking.com is descriptive of services involving “booking” available at that domain name.
The PTO appealed, contesting only the district court’s determination that “Booking.com” is not generic. The Fourth Circuit affirmed and rejected the PTO’s position that the combination of “.com” with a generic term like “booking” “is necessarily generic.” 915 F. 3d 171, 184 (2019). The Supreme Court granted certiorari and affirmed the Fourth Circuit’s decision.
In affirming, three principles guided the Court — none of which the parties disputed. First, a...
