Free Consultation

(858) 220-1166

Supreme Court Rules Booking Dot Yeah

July 17, 2020 | Intellectual Property

Books.com. Computers.com. Mattresses.com. What do all of these domain names have in common? Well, apparently they are all now eligible for trademark protection according to the Supreme Court’s latest ruling in favor of Booking.com. The case considered whether a generic “.com” website can serve as an indicator of source such that the domain can create a federally-protectable trademark.

Previously, the Patent and Trademark Office employed a fairly rigid standard of not granting registration for trademarks that consist of a generic word when paired with a TLD (top level domain). A generic term is a term that consumers understand to be the common name for the underlying goods or services. However, the Supreme Court considered whether the consuming public actually considers a unique URL as an indicator of source. (With note that the sole function of a trademark is to act as a source indicator.) Ultimately, the Supreme Court ruled that, because consumers do not view Booking.com as a generic name, that the URL isn’t generic and can indeed function as an indicator of source.

On the one hand, this makes sense. Each URL is unique and can be owned and controlled by only one (1) entity. There will only ever be one (1) booking.com. There will only ever be one (1) mattresses.com. Therefore, each URL is by definition unique and on a basic level an indicator of source – that individual, unique website.

On the other hand, what happens when competitors attempt to use the same generic name with a slightly different TLD? For example, Booking.biz? Booking.org? Booking.co? Are each of the foregoing capable of trademark protection? This issue highlights the importance of setting a budget for protecting similar URLs – even if you’re only using one.

The ruling did not, however, describe what types of evidence are needed to prove that a generic “.com” website is not generic. There was no quantitative measure of advertising or sales figures, any survey evidence, etc. Moreover, the ruling did not make it easy for applicants to obtain a U.S. trademark registration for a generic term paired with a TLD – those applicants will bear the burden of proving that their applied-for name can function as a trademark. For a generic term paired with a TLD this is a high burden indeed.

At the end of the day, this is a big win for Booking.com – and a smaller victory for the every day trademark owner.

As a final note, the Supreme Court’s Booking.com decision was the first ever oral argument conducted over the phone before the Supreme Court (due to coronavirus, of course). Not only was the ruling precedential, but the hearings themselves were as well.