On June 30, 2020, the U.S. Supreme Court decided United States Patent and Trademark Office et al. v. Booking.com B.V. and resolved a circuit split by ruling that adding “.com” to the end of an otherwise generic name may render that name descriptive and thus potentially protectable as a trademark. The 8-1 decision has significant implications for brand owners, particularly those who have developed or intend to develop substantial goodwill in a mark that also constitutes a domain name.
BackgroundTo be protectable under the federal Lanham Act, a trademark must be “distinctive” or “capable of distinguishing the applicant’s goods from those of others.” 15 U.S.C. § 1127. Words that are merely common names for objects and services are “generic” and can never receive trademark protection, because no trademark owner can be granted a monopoly over a term that the public needs to use to refer to those objects and services. Marks that are “descriptive” — i.e., that describe the function, use, characteristic, size or intended purpose of a good or service (e.g., “5 MINUTE GLUE” for quick-dry glue) — are capable of receiving trademark protection, but only to the extent that those marks have, through use in commerce, become associated with a single source of goods or services among relevant consumers. This later acquired distinctiveness is often referred to as “secondary meaning.”
In the present case, Booking.com B.V. sought federal trademark registration for “Booking.com” in connection with its online travel and hotel reservation services, but the application was rejected by the U.S. Patent and Trademark Office on the grounds that “Booking.com” is generic as applied to such services. In so holding, the Trademark Office considered, but ultimately rejected, the argument that the addition of “.com” was sufficient to render the mark descriptive. It expressly rejected Booking.com B.V.’s argument that the mark was registerable upon a demonstration of secondary meaning. The Trademark Trial and Appeal Board affirmed the rejection of the application on the same grounds.
In a subsequent civil suit brought by Booking.com B.V., the U.S. District Court for the Eastern District of Virginia reversed the rejection, holding that (1) while “booking” is a generic term and “.com” is a generic term, the combination of the two creates a descriptive mark, and (2) the applicant carried its burden of demonstrating that the mark has acquired secondary meaning. Booking.com v. Matal, 278 F. Supp. 3d 891, 923 (E.D. Va. Aug. 9, 2017). The U.S. Court of Appeals for the Fourth Circuit agreed in both respects. Booking.com B.V. v. United States Patent & Trademark Office, 915 F.3d 171, 181-82 (4th Cir. 2019).
The Fourth Circuit’s decision created...
