The U.S. Supreme Court will soon determine whether combining a generic term with a generic top-level domain (gTLD) such as .com can ever be a protectable trademark. Regardless of how the Court rules in U.S. Patent & Trademark Office v. Booking.com B.V., there will be repercussions for future recognition of trademark rights in generic.com domains.
In support of its longstanding practice of rejecting applications to register a generic.com, such as BOOKING.COM, the USPTO claims that registering generic terms combined with gTLDs creates monopolies over "common coinages" that restrict competitors from describing their products and services. To prevail, the USPTO must establish that BOOKING.COM is generic, denoting a "booking commercial website," establishing that, as such, it is ineligible for trademark protection under the Lanham Act. If the Court finds it protectable, there may be a flurry of companies adopting domains consisting of generic words combined with gTLDs and trying to register them as trademarks.
Booking.com claims that, when evaluated in its entirety, as the Trademark Office must, BOOKING.COM makes a distinctive commercial impression that's distinguishable from another's use of "booking" alone. It may also counter that marks like BOOKING.COM are unlikely to hinder competitors from describing their products and services because a competitor is always referring to a particular source of products and services by referencing the domain. If two domains are confusingly similar, such as booking.com and bookings.com, the same likelihood of confusion standard should be applied to resolve the dispute.
If the Court rules in favor of Booking.com, it should clarify under what circumstances it will allow a generic term combined with a gTLD to register and how broadly they can be enforced. The Court should at least require generic.com domains to show secondary meaning and acquired distinctiveness as it does for descriptive marks. Furthermore, an entity that owns and uses a domain may be blocked from registering it if another entity has filed a prior intent-to-use application for that domain in the U.S. or abroad. To reduce these conflicts, the USPTO will need to verify that applicants own the domain before they apply for its registration.
In recent Supreme Court trademark decisions, Matal v. Tam and Iancu v. Brunetti, the Court held that refusing applications for disparaging, immoral and scandalous marks was unconstitutional due to broad restrictions on free speech. We could see the Court continue this trend of reducing restrictions on what brands are granted trademark registration. In arguing against trademark protection for generic.com domains, the USPTO relies on decade-old Federal Circuit decisions to deny applications for marks that combine gTLDs with generic terms (e.g., In re 1800Mattress.com IP LLC; In re Hotels.com, L.P.; In re Reed Elsevier Properties Inc.; and In re Oppedahl & Larson LLP). In the years since, however, online consumer activity has substantially increased at an unprecedented rate. This trend supports an assertion that domain names are becoming source-identifying for companies' products and services since a growing number of online consumers are visiting websites to make purchases.
Previously, in Kellogg v. National Biscuit, the Supreme Court held that a mark is not generic when the "primary significance of the term in the minds of the consuming public is not the product but the producer." Since domain names are unique in nature and drive consumers to a particular source of information, products or services, they acquire distinctiveness, regardless of how generic the second level domain appears without the gTLD. Considering this characteristic of domains, the Court is likely to rule in favor of Booking.com as the USPTO's position is no longer consistent with the realities of brand development and acquired distinctiveness on the internet.
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