In February 2019, the US Court of Appeals for the Fourth Circuit
affirmed the district court's summary
judgment ruling that found that BOOKING.COM was not generic,
but a descriptive mark with acquired distinctiveness. Trademark
lawyers are intrigued by the fact that, as pointed out in Judge
James Wynn's dissenting opinion, the decision departs from most
prior rulings in ".com" cases, where generic
Secondary Level Domains ("SLD") combined with Top
Level Domains ("TLD") do not generally add up to
protectable marks (for example, LAWYERS.COM and MATTRESS.COM).
How did the Fourth Circuit determine that the mark
BOOKING.COM was descriptive?
Analyzing a Generic Mark
Courts place marks into one of four categories of relatively
increasing strength: generic, descriptive, suggestive, and
arbitrary or fanciful. Generally speaking, generic marks will not
receive trademark protection because they merely embody the brand
name of the subject goods or services that they
