SCOTUS Watch: SCOTUS Finds Adding “.com” to “Booking” Makes it a Non-Generic Registrable Mark

In a major ruling, the U.S. Supreme Court held in U.S.P.T.O. v. Booking.com B.V.,[1] that an otherwise generic mark used in commerce conveys source-identifying characteristics when used with the “.com” top-level domain (TLD).  In her majority opinion, Justice Ginsburg opined that since only one domain name owner can hold one particular domain name at any given time, a consumer familiar with the business of that domain name holder can infer that its business refers to a specific business entity.  Because of this, a generic mark could acquire enough distinctiveness for trademark registration.

https://www.supremecourt.gov/opinions/19pdf/19-46_8n59.pdf

Justice Breyer was the lone dissent, and he noted that merely adding “Company” or some other generic term after the trade name does not yield a “protectable compound form.”  He further argued that the combination of “booking” with “.com” does not infer a particular source-identifying quality; in fact, just adding “.com” to a domain name just infers a website is associated with that name and does not add any inherently distinctive features to that second-level domain (i.e., “booking”).

This case will no doubt recast the distinctiveness landscape which all trademark practitioners have known since the Lanham Act was enacted 74 years ago.  It is certain that with the expected increase in TLD-branded trademark applications that will follow this ruling, it will also set the stage for an increase in trademark infringement and dilution cases in the federal courts.  The increased jurisprudence will create some chaos in what was a stable system of trademark distinctiveness.

[1] 591 U.S.___ (2020), aff’g Booking.com B.V. v. U.S.P.T.O., 915 F.3d 171 (4^th Cir. 2019), rev’g Booking.com B.V. v. Matal, 278 F. Supp. 3d 891, 918 (E.D. Va. 2017).