US Decision on a dot-com Domain Name may Change the Registrability of Generic Trademarks

On March 23, 2020, the U.S. Supreme Court was expected to hear arguments as to whether Booking.com can register its domain name, despite the US Patent and Trademark Office’s (USPTO) determination that it is not registrable.

Booking.com initially applied to register its domain name as a trademark, but the USPTO rejected its attempts on the grounds that the generic terms “booking” and “.com” do not add up to create a protectable and unique trademark. Booking.com appealed the USPTO’s decision and was successful in the lower courts. The USPTO has now appealed the ruling of the Fourth Circuit Court of Appeals to the US Supreme Court.

The Electronic Frontier Foundation, a group known for advocating for digital civil liberties, filed a “friend of the court” brief stating that Booking.com should not be allowed to register this trademark. However, a survey relied on by Booking.com showed that nearly 75% of relevant consumers consider Booking.com a brand and not just a generic name.

Booking.com argues that “the [USPTO] even registered Cooking.com—but the government now insists Booking.com is a bridge too far”. The US Supreme Court is expected to issue its decision by the end of June.                                                                                                                               

Summary By: Juliette Sakran