SCOTUS Rules "Generic.com" Marks Are Eligible For Federal Trademark Protection

In a landmark decision, United States Patent and Trademark Office v. Booking.com B.V., the Supreme Court of the United States, by an 8-1 vote, affirmed the lower court's determination that Booking.com could register BOOKING.COM as a trademark.  In so ruling, the Court held that whether any given "generic.com" term is eligible for trademark protection turns on whether consumers perceive the term as capable of distinguishing among members of a class of goods or services as opposed to being the generic name of a class of goods or services.  If the former, such terms are eligible for federal trademark protection.

The case began when the United States Patent and Trademark Office ("PTO") refused to allow Booking.com, a digital travel company that maintains a travel-registration website by the same name, to register "BOOKING.COM" as a mark for those services. The PTO took the position that "booking.com" was a generic name for online hotel-reservation services