Supreme Court agrees to answer whether or not the addition of ".com" can transform a generic term into a protected trademark.

Booking.com operates a website for customers to book travel and hotel accommodations. It has been using the name “BOOKING.COM” since at least 2006 in connection with its online booking services. In 2011 and 2012, Booking.com filed four trademark applications the U.S. Patent and Trademark Office (USPTO) for the mark BOOKING.COM, as a word mark and stylized versions thereof, for various travel accommodation services including, but not limited to, online hotel booking services.

The USPTO refused to register the applications, finding that the marks were not protectable because BOOKING.COM is generic as applied to the services identified in the applications. The Trademark Trial and Appeal Board (TTAB) affirmed the refusals to register.

Booking.com appealed the TTAB’s decisions by filing a civil action against the USPTO in the Eastern District of Virginia. The district court reversed the denial of trademark protection, siding with Booking.com, and the U.S. Court of Appeals, Fourth Circuit affirmed the decision in February 2019.

The USPTO refused registration of the BOOKING.COM applications on the grounds that the mark is generic for the hotel reservation services identified in the applications. A mark is generic if it is the common name of a product, e.g., LITE BEER for light beer or CONVENIENT STORE for convenience stores. The Lanham Act expressly bars registration of marks that are generic terms for the applicant’s goods/services. Generic terms can never obtain trademark protection because they do not have source-identifying significance.

The USPTO argued that the word “booking” is generic for the hotel and travel reservation services in Booking.com’s applications. Further, courts and commentators have long stated that top-level domains (TLDs) are not protectable and generally serve no source-identifying function. Therefore, the USPTO contends that adding a TLD such as “.com” to a generic second-level domain such as “booking” is necessarily generic.

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