Trademark: ‘’ trademarks OK with Supreme Court

Recently, the U.S. Supreme Court ruled that a generic word and .com when used together, such as in the company name “”, could be eligible for exclusive U.S. trademark protection. This decision overturned a long standing U.S. Patent and Trademark Office (“USPTO”) prohibition on granting U.S. trademark registration for trademarks that contained a generic word and .com.

The Supreme Court ruled that a generic word and .com when combined together would only be considered generic, and therefore not registrable, if when combined they have a generic meaning to consumers as a class of services instead of a specific class member or business providing the services. This ruling may allow for additional .com trademarks to be registered with the USPTO and for new arguments that any generic term may become a trademark if consumers perceive it to be a particular source of goods or services.

In the present case, the online hotel reservation company “” sought U.S. trademark registration for its company name which contained the generic term “booking” as used in the online hotel reservation industry. The company argued that consumers did not perceive “” as a class of services related to booking hotel rooms, but rather as a distinct, individual and separate business which provided online hotel reservation booking services. argued that a consumer’s perception of the generic term is integral to determining if a trademark is generic.

The Supreme Court agreed with and lower court rulings which had found that consumers did not identify as a class of hotel reservation services but rather as a distinct business that offers online hotel reservation services. Therefore, was registrable as a protected trademark in the U.S. even though it contained the generic word “booking” as used in the travel industry for reserving hotel rooms. In explaining its reasoning, the court stated the ruling is limited to a situation where consumers perceived the generic term as identifying either (i) a class in general or (ii) a specific class member. If consumers perceive the trademark to represent a class rather than a specific, distinct class member or business then the term (and trademark) is not registrable as it is considered generic.

In further explaining its reasoning, the Supreme Court stated that internet domain names are unique because only one entity can be assigned the domain name, unlike a trade name which in many states including Colorado is not exclusive to the holder of the trade name. As a result, the Court observed, consumers understand that a particular domain name could identify a unique source, rather than only identifying a generic class of goods or services. The Court also noted that the USPTO’s understanding of past Supreme Court precedent related to the registration of generic terms as protected trademarks was “flawed” because it excluded consumer perception as a factor in determining whether a trademark or particular term is generic.

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