SCOTUS Rejects USPTO Rule on Generic Marks

July 2, 2020 Advisory

On Tuesday, June 30, the U.S. Supreme Court held that the domain name BOOKING.COM had acquired distinctiveness, meaning consumers recognize the domain as an indicator of source, and now it is eligible for federal trademark registration. In doing so, the Supreme Court rejected the United States Patent and Trademark Office’s (USPTO) rule that the combination of a generic word such as “booking” and the top-level domain “.com” is automatically generic. In trademark law, a generic term is a term that directly refers to the name of the product or service itself. Generic terms are never eligible for federal trademark registration, as the law dictates that parties should be free to describe the products or services they are selling.

The USPTO argued that “booking” means to make travel reservations and “.com” is a generic top-level domain, and therefore, allowing registration of the mark BOOKING.COM would hinder competition and prohibit competitors from using similar terms. However, the Supreme Court disagreed, sidestepping the concerns raised by the USPTO and ending the long-running battle over whether certain types of domain names can be eligible for trademark rights. The Supreme Court’s holding does not, however, negate the requirement that trademark owners must use their marks as more than merely domain names, meaning they must also use the domain name on the corresponding website, in advertisements, and on the products or with the services offered to customers.

In reaching this decision, the Supreme Court relied heavily on extensive consumer survey evidence in which 74.8% of survey participants thought that BOOKING.COM is a brand name, whereas only 23.8% believed it was a generic name. So what does this mean for brand owners now? While the BOOKING.COM decision may open the floodgates for trademark applications of domain names, there remains the task of establishing that consumers recognize the domain name as an indicator of the source of products or services. Nevertheless, brand owners that use a strong domain name can now further strengthen their trademark portfolio and increase their competitive advantage in the marketplace. The attorney for Booking.com said that the Supreme Court ruling "demonstrates that the U.S. legal system has the capacity to evolve in order to reflect the digital world we are all living in."

Contact Us
  • Worldwide
  • Boston, MA
  • Denver, CO
  • Dublin, Ireland
  • Edwardsville, IL
  • Jefferson City, MO
  • Kansas City, MO
  • Las Vegas, NV
  • London, England
  • Miami, FL
  • New York, NY
  • Philadelphia, PA
  • Princeton, NJ
  • Salt Lake City, UT
  • St. Louis, MO
  • Washington, D.C.
  • Wilmington, DE
Worldwide
abstract image of world map
Boston, MA
800 Boylston St.
30th Floor
Boston, MA 02199
Google Maps
Boston, Massachusetts
Denver, CO
4643 S. Ulster St.
Suite 800
Denver, CO 80237
Google Maps
Denver, Colorado
Dublin, Ireland
Fitzwilliam Hall, Fitzwilliam Place
Dublin 2, Ireland
Google Maps
Edwardsville, IL
115 N. Second St.
Edwardsville, IL 62025
Google Maps
Edwardsville, Illinois
Jefferson City, MO
101 E. High St.
First Floor
Jefferson City, MO 65101
Google Maps
Jefferson City, Missouri
Kansas City, MO
2345 Grand Blvd.
Suite 1500
Kansas City, MO 64108
Google Maps
Kansas City, Missouri
Las Vegas, NV
1980 Festival Plaza Drive, Suite 750
One Summerlin
Las Vegas, NV 89135
Google Maps
Las Vegas, Nevada
London, England
Royal College of Surgeons of England
38-43 Lincoln’s Inn Fields
London, WC2A 3PE
Google Maps
Miami, FL
355 Alhambra Circle
Suite 1250
Coral Gables, FL 33134
Google Maps
Photo of Miami, Florida
New York, NY
7 Times Square, 44th Floor
New York, NY 10036
Google Maps
New York City skyline
Philadelphia, PA
2005 Market Street
29th Floor, One Commerce Square
Philadelphia, PA 19103
Google Maps
Philadelphia, Pennsylvania
Princeton, NJ
100 Overlook Center
Second Floor
Princeton, NJ 08540
Google Maps
Princeton, New Jersey
Salt Lake City, UT
201 South Main Street
Suite 750
Salt Lake City, UT 84111
Google Maps
Salt Lake City, Utah
St. Louis, MO
7700 Forsyth Blvd.
Suite 1800
St. Louis, MO 63105
Google Maps
St. Louis, Missouri
Washington, D.C.
1050 Connecticut Avenue NW
Suite 500
Washington, DC 20036
Google Maps
Photo of Washington, D.C. with the Capitol in the foreground and Washington Monument in the background.
Wilmington, DE
1007 North Market Street
Wilmington, DE 19801
Google Maps
Wilmington, Delaware