On June 30, 2020, the U.S. Supreme Court held that Booking.com is a recognized trademark and not a generic term. The Supreme Court ruled that the adding of the ".com" top level domain ("TLD") to a generic term, could transform a "generic.com" term into a protectable trademark, if consumers can distinguish the term as a recognizable trademark.
The Supreme Court made clear that its holding is based on "whether a [generic.com] term is generic depends on its meaning to consumers." Because consumers recognized BOOKING.COM as a brand, the Supreme Court was not prepared to find the mark generic in this case. This decision was a rejection of an age-old rule of the USPTO that all ".com" marks must be found generic and put similarly situated registrations at risk of being cancelled.
This is a significant ruling for brand owners. For brand owners that intentionally chose to adopt a more descriptive or generic brand name rather that one more distinct, they will have to invest more resources into creating secondary meaning in the minds of consumers. This decision is likely to result in an increase in the registration of generic domains by domain name squatters and the asking price of any generic domains not already commercialized to also rise.
However, it is still a better bet for brand owners to pick an arbitrary or suggestive mark versus a descriptive mark. Such marks are afforded a greater scope of protection and are still less likely to result in a costly prosecution. Call us to discuss your options for filing a trademark.
Niky Syrengelas, Esq.
By Crockett & Crockett posted on Thursday, July 2, 2020.