After the U.S. Supreme Court’s first oral argument ever conducted by phone (due to Covid-19 restrictions), the Court recently held in an 8-1 decision in United States Patent and Trademark Office v. Booking.com B.V. that the domain name BOOKING.COM could be registered as a trademark. The Court rejected the U.S. Patent and Trademark Office’s (“USPTO”) proposed rule that a generic term, when combined with the .com top level domain, must automatically be deemed generic and therefore ineligible for trademark protection. The Court held that whether a term is generic or is a protectible trademark must be determined by reference to consumers’ perception.
By adopting a standard that determines whether a term is generic solely with reference to consumer perception, the Court’s decision expands the availability of trademark protection for domain names and reduces the number of terms that will be automatically deemed unprotectable due to their genericness. This ruling provides more opportunity for brand owners to register and protect brands that consist of generic term combinations.