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ARTICLE · 21 NOVEMBER 2019

Supreme Court To Hear Dot-Com Trademark Issue

Cooley LLP
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On November 8, 2019, the United States Supreme Court agreed to take up a case that could potentially have a significant impact on domain name owners and those who have invested in promoting their dot-com brand.

United StatesIntellectual Property
Crystal Caldera
Crystal Caldera
Bobby Ghajar
Bobby Ghajar
Rose Kautz
Rose Kautz
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On November 8, 2019, the United States Supreme Court agreed to take up a case that could potentially have a significant impact on domain name owners and those who have invested in promoting their dot-com brand. Can combining an arguably generic term with a generic top-level domain create a mark that is eligible for trademark protection?

Booking.com operates an online travel reservation system. In 2012, Booking.com applied to register stylized versions of "Booking.com" as a trademark. The United States Patent and Trademark Office ("USPTO") rejected the marks as generic. On appeal, the Trademark Trial and Appeal Board ("TTAB") agreed, concluding that the mark was generic as applied to Booking.com's "online hotel reservation services" because "booking" refers to "a reservation or arrangement to buy a travel ticket or stay in a hotel room," and the ".com" suffix did not add any source-indicating significance or otherwise change its meaning.

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