The Supreme Court ruled that some generic words paired with “.com” can become federally protected trademarks.
On Tuesday, the court ruled by an 8-1 vote in favor of Booking.com, a website founded in 2006 that customers use to obtain travel and housing reservations, determining that the website is entitled to a trademark.
“A term styled ‘generic.com’ is a generic name for a class of goods or services only if the term has that meaning to consumers. Consumers, according to lower court determinations uncontested here by the PTO, do not perceive the term ‘Booking.com’ to signify online hotel-reservation services as a class. In circumstances like those this case presents, a ‘generic.com’ term is not generic and can be eligible for federal trademark registration,” Associate Justice Ruth Bader Ginsburg wrote for the majority.
Associate Justice Stephen Breyer, a Clinton nominee, was the only justice to dissent.
“The company’s name informs the consumer of the basic nature of its business and nothing more. Therein lies the root of my disagreement with the majority. Trademark law does not protect generic terms, meaning terms that do no more than name the product or service itself,” Breyer wrote.
“This principle preserves the linguistic commons by preventing one producer from appropriating to its own exclusive use a term needed by others to describe their goods or services. Today, the Court holds that the addition of ‘.com’ to an otherwise generic term, such as ‘booking,’ can yield a protectable trademark. Because I believe this result is inconsistent with trademark principles and sound trademark policy, I respectfully dissent,” he continued.
The case, U.S. Patent and Trademark Office v. Booking.com B.V., pertains to the website filing four applications with the U.S. Patent and Trademark Office in 2011 and 2012. The office rejected the site’s applications on the grounds that it was generic and must be “distinctive,” as required by the Lanham Act.
The Lanham Act also permits trademark protections for “descriptive” words with a secondary meaning that customers associate between the mark and the source of products or services. The office also ruled Booking.com did not establish a secondary meaning among its customers. The Trademark Trial and Appeal Board agreed.
However, the 4th Circuit U.S. Court of Appeals reversed the ruling and agreed that, though the word “booking” itself is generic, it becomes eligible for trademark protections when paired with “.com.”
The decision is a significant legal victory for businesses across the internet.
