The Supreme Court issued a landmark ruling in Patent and Trademark Office v. Booking.com which held Booking.com could attain trademark protection for the name of their generic website in conjunction with a top level domain as long as the website was not generic in the eyes of the consumer.
The United States Patent and Trademark Office (USPTO) and Trademark Trial and Appeal Board (TTAB) initially declined Booking.com’s trademark application due to the generic nature of the mark. Their decision was overruled by the Supreme Court’s majority opinion, authored by Justice Ginsberg, who applied a “generic” test to determine whether a generic website name could be protected as a trademark. Specifically, the case hinged on whether the name of the website was generic in the eyes of an average consumer. In the majority opinion authored by Justice Ginsberg, the Court stated:
“According to the PTO, adding ‘.com’ to a generic term—like adding ‘Company’—can convey no source-identifying meaning. That premise is faulty, for only one entity can occupy a particular Internet domain name at a time, so a ‘generic.com’ term could convey to consumers an association with a particular website. Moreover, an unyielding legal rule that entirely disregards consumer perception is incompatible with a bedrock principle of the Lanham Act: The generic (or nongeneric) character of a particular term depends on its meaning to consumers, i.e., do consumers in fact perceive the term as the name of a class or, instead, as a term capable of distinguishing among members of the class.”
One result of this ruling is the potential for establishing a substantial number of new trademarks for holders of generic websites with top level domains who previously could not achieve trademark protection. Once trademark protection is secured, there is also potential for disputes arising from the coverage of these new marks among existing market participants with similar names.