USPTO v. Booking.com BV, Understanding USPTO's Decision and Aftermath

If you run a website with a simple domain name, like bikes.com, and your company gets popular enough, can you eventually file for a trademark on that phrase and domain extension? Is the domain of your site, which is also the name of your company, simply a description of what you do (you sell bikes, and happened to get a very good domain for that) or has it become a part of your brand identity? The goal here would be stopping the use of similar sounding domain names (think: thebikes.com) that could potentially hurt your business. Last year, this exact question was put to the test in a lawsuit between the United States Patent and Trademark Office and the website booking.com. The site had filed for a trademark back in 2017, which, upon examination by the Office’s trademark examiners was found to be “generic” and a trademark was therefore not granted. The District Court and the Court of Appeals for the Fourth Circuit sided with the website in 2019, for one interesting reason — because booking.com offered not only reservation services but also hotel booking services, its domain name was no longer purely descriptive and had a secondary meaning as a brand name. USPTO then took the case to the Supreme Court. In April of 2020, the Supreme Court ruled in an 8-1 decision that a generic term (“Booking”), if used as part of a website address (Booking.com), could receive trademark protection upon a showing of secondary meaning. The USPTO was basically arguing that a generic term, when combined with .com, was by definition still generic. The Court chose to look at how the term was used — surveys and other evidence presented showed that consumers do associate “bookings.com” with a specific brand name. Did you know? Due to the COVID-19 pandemic, this case was the first in U.S. Supreme Court history to be argued remotely. It was also the last opinion written by Justice Ruth Bader Ginsburg. After the decision, the USPTO released an Examination Guide on “generic.com” domain names that provides guidance on how to apply the Court’s decision. The main thrust of the guide seems to be that “booking.com” was the exception rather than the rule when it comes to these types of trademarks, and that most companies, unless they have very strong consumer recognition, would not qualify for this type of trademark. Understandably, the Supreme Court’s decision led to a number of new trademark applications from domains like “wine.com”, “cruises.com”, “sneakers.com”. The USPTO is still examining these on a case by case basis: wine.com and sneakers.com were deemed as generic, while a decision on cruises.com has not been made yet. Need help with your own brand’s trademarks and IP? At IpHorgan, we exclusively focus on intellectual property law. Let our years of experience work for you! Contact us today to schedule a consultation!