On June 30, 2020, Justice Ginsburg, writing for the Supreme Court, concluded that the addition of “.com” to a generic mark can be sufficient to elevate the mark beyond genericism and trigger federal trademark protection.
Previously, Booking.com was denied federal trademark recognition on the basis that it was a generic term, signifying a class of online hotel-reservation services rather than a particular brand or service of that class. Both the examining attorney and the Trademark Trial and Appeal Board (“TTAB”) concluded that the term “Booking.com” was generic for the services it provided and was therefore unregistrable. The TTAB, the PTO Appeal Board, analyzed the two components of the mark separately, concluding that “Booking” represented a generic term that was indicative of making travel reservations; and adding “.com” did not enhance the distinctiveness of the mark, it merely represented that the service is located on a commercial website. Booking.com sought review in the U.S. District Court for the Eastern District of Virginia, where that court relied on evidence of the consuming public’s understanding of the mark in determining that Booking.com met the distinctiveness requirement for trademark registration. The PTO did not appeal the District Court’s determination of how consumers perceived the term “Booking.com”, and instead only appealed that court’s holding that the mark was not generic.