Supreme Court to Consider Whether Addition of “.com” Transforms Generic Terms into Protectable Trademarks

On November 8, 2019, the Supreme Court granted a writ of certiorari to the U.S. Patent and Trademark Office (“USPTO”), and will consider whether the addition of “.com” transforms generic terms into protectable trademarks.

In August 2019, the USPTO petitioned the Supreme Court to revisit the court of appeal’s decision that allowed Booking.com to register its name as a trademark, arguing that the name is too generic for trademark protection. The USPTO maintained that the addition of “.com” does not itself have source-identifying significance but only conveys that the company has an online presence via a website. The USPTO also points out that the court of appeal’s decision, that Booking.com is a protectable trademark, stands in conflict to other decisions of the Federal and Ninth Circuits which determined that Hotels.com, Advertising.com, Lawyers.com, and Mattress.com are all generic and do not warrant trademark protection.

In its petition, the USPTO worried that granting trademarks for “generic.com” terms creates significant anticompetitive harm by granting a trademark holder far more intellectual property rights than the domain name itself because it potentially covers all combinations of the generic term in a domain name and would allow the trademark holder to bring infringement suits against a variety of competitors.

On August 7, 2019, Booking.com petitioned the Supreme Court to deny the USPTO’s petition for certiorari. In its petition, Booking.com argues that the USPTO bears the burden of finding evidence consumers used the trademark Booking.com as a generic term and no such evidence was found. Booking.com also contended that “it is impossible to use Booking.com in a grammatically coherent way to refer generically to anything” and the primary significance of the name Booking.com is as a trademark and does not identify an entire class of goods or services. Booking.com makes the argument that consumers recognize Booking.com as a trademark since it is perhaps the best-known and most successful travel-service brand.

In its petition, Booking.com contends that relevant precedent holds that “.com” is descriptive and not generic. Booking.com used Amazon and Staples as examples that “.com” alters the meaning of generic term to recognizable companies. Booking.com points out the primary meaning of Amazon is a river, yet the addition of “.com” immediately alters the meaning to the recognizable e-commerce giant, and while staples are simply an office supply to bind papers, Staples.com is a leading retailer of office supplies which was granted trademark protection from the USPTO. Booking.com provides further examples of the USPTO granting trademark registration to “generic.com” marks including, Weather.com, Ancestry.com, Answers.com, Cheaptickets.com, and Scuba.com.

The USPTO’s petition for writ of certiorari was granted by the Supreme Court on November 8, 2019, and as usual no explanation was given as to the reason for granting the USPTO’s petition.