The United States Supreme Court issued a decision on June 30, 2020, holding that “Booking.com” can be registered as a trademark. The decision, United States Patent and Trademark Office, et al, vs. Booking.com B. V., reverses longstanding Trademark Office policy and should significantly expand the number of Internet domain names that can be registered as trademarks in the United States.
The case began when Booking.com B. V. sought court review of a decision by the Trademark Office refusing to register BOOKING.COM as a trademark. The Trademark Office and Booking.com B. V. both agreed that “booking” was not registrable. But Booking.com B. V. argued that adding “.com” to “booking” resulted in a trademark that was registrable. The Court agreed.
The decision makes a significant change to Trademark Office policy. U.S. trademark law does not allow the registration of “generic” terms as trademarks. Generic terms are those that describe the class of product or service being offered: jam, airline, and steel are examples. The Trademark Office has long applied this restriction to domain names that are made up of generic terms. In the Booking.com case, the Trademark Office took the position that “booking” and “.com” were both generic terms. So combining the two resulted in a combined generic term that the Trademark Office believed was not registrable.
The Court held that the Trademark Office’s approach was wrong. It found that the Booking.com domain name, even though constructed of two generic terms, could qualify for trademark registration and protection: in the minds of consumers, the combined term had become a brand that identified uniquely the services offered by the business using that domain name. This association is known as “secondary meaning” under trademark law. The Court further held that adding “.com” to a generic word such as “booking” does not necessarily result in a generic term.
Businesses should now consider whether to apply for federal registration of their Internet domain names as trademarks. The Court’s decision opens the door to registration of two types of domain names:
- Domain names made up of distinctive terms (not generic terms) should be registrable as trademarks. Distinctive terms are those that don’t describe the goods or services being sold. Classic distinctive terms are “Xerox,” “Dr. Pepper,” and “Amazon.”
- Any domain name that has gained secondary meaning should be registrable as a trademark. Being able to demonstrate consumer association of a particular domain name with your goods or services is likely to be necessary if the components of the domain name are generic.
The Booking.com decision does not mean that all Internet domain names will automatically be entitled to registration. But it significantly expands the ability of businesses to obtain trademark registration and protection for domain names.
