The Lanham Act makes it clear that generic terms cannot be
registered as trademarks. 15 U.S.C. § 1051 et
seq. But can an online business create a protectable trademark
by adding a generic top-level domain—like
“.com”—to an otherwise generic term?
That’s the question the Supreme Court will answer in
U.S. Patent & Trademark Office v. Booking.com B.V.,
No. 19-46. The Court granted the USPTO’s petition for writ of
certiorari on November 8 and will decide the case in this
year’s term.
In 2011 and 2012, Booking.com, a travel and hotel accommodations
company, filed four trademark applications for BOOKING.COM.
The company sought to register both the word mark and stylized
versions of the mark. Finding the marks generic and therefore
unprotectable, a USPTO examiner rejected these applications.
Alternatively, the USPTO concluded, the company had not shown that
the marks acquired a secondary meaning, and the marks were merely
descriptive. The TTAB affirmed these rejections.
