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Supreme Court Bonus: PTO v. Booking.com

By Jon Hines

Last week the U.S. Supreme Court ruled that generic domain names are eligible for trademark protection. A generic domain name includes a general word describing the business followed by ".com" or other top-level domains (such as ".org" or ".net). Previously, the U.S. Patent and Trademark Office had denied numerous trademark applications, including for Booking.com, in which the name before the internet address was a non-distinctive general word about the goods or services offered by the website. The Supreme Court has overruled that practice and stated that "Booking.com" and other similar domain names may be eligible for trademark registration when recognized as a true source identifier that uses the domain name extension to distinguish the trademark owner from others in the industry.

Justice Ruth Bader Ginsburg stated in the decision that there is "no cause to deny Booking.com the same benefits Congress accorded other marks qualifying as nongeneric." It seems that the Supreme Court appreciates that internet addresses actually provide distinction, unlike a generic word followed by "Co." or "Inc." This is because while there can be numerous duplicate "Booking Inc." companies, there can be only one "Booking.com" company.

This is a useful decision by the Supreme Court because it provides much needed guidance for brand owners and their counsel. The Supreme Court's ruling will eliminated the USPTO's routine prohibition against these types of trademarks in favor of a more fact-dependent analysis.

Company and brand owners utilizing domain name extensions in their trademarks can now register those trademarks, but the Supreme Court's decision may still open the door for administrative interpretation and litigation. For example, as Justice Stephen Breyer lays out in his lone dissent, Booking.com can theoretically now "threaten trademark lawsuits against competitors using domains such as bookings.com, eBooking.com, booker.com, or bookit.com." Whether or not Justice Breyer's concern comes to fruition, Tuesday's decision incentivizes brand owners to file trademark applications for their domains.

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