United States Patent and Trademark Office v. Booking.com B.V.

Booking.com B.V., a Dutch travel-reservation website, filed four trademark applications with the USPTO in 2011 and 2012 for marks including the term "Booking.com." The USPTO refused registration, concluding the term was generic for online hotel-reservation services. The Trademark Trial and Appeal Board affirmed. Booking.com appealed to the Eastern District of Virginia, submitting consumer surveys showing 74.8 percent of consumers identified "Booking.com" as a brand name. The district court found the mark descriptive and registrable upon a showing of secondary meaning. The Fourth Circuit affirmed, rejecting the USPTO's argument that combining a generic term with ".com" necessarily yields a generic composite. The Supreme Court granted certiorari. On June 30, 2020, the Court affirmed in an 8-1 decision authored by Justice Ginsburg, holding that a "generic.com" term is generic only if consumers perceive it as such.

The Supreme Court affirmed the Fourth Circuit's decision in an 8-1 ruling. The Court held that a term styled "generic.com" is a generic name for a class of goods or services only if the term has that meaning to consumers. Because consumers do not perceive "Booking.com" as a generic name for online hotel-reservation services, the term is not generic and is eligible for federal trademark registration. Justice Ginsburg delivered the majority opinion, joined by Chief Justice Roberts and Justices Thomas, Alito, Sotomayor, Kagan, Gorsuch, and Kavanaugh. Justice Sotomayor filed a concurring opinion. Justice Breyer filed the sole dissenting opinion, arguing that the decision would lead to a proliferation of "generic.com" marks and grant owners an unfair monopoly in online commerce.

Whether the addition of a generic top-level domain name such as ".com" to a generic term such as "booking" creates a protectable trademark, and whether the USPTO's proposed nearly per se rule that any combination of a generic term with ".com" is automatically generic is consistent with the Lanham Act and consumer perception principles.

The decision opened the door for owners of "generic.com" domain names to seek federal trademark registration, potentially leading to an increase in trademark filings for such marks. Brand owners viewed the ruling as a welcome acknowledgment of consumer perception's central role in trademark law. Critics, including Justice Breyer and the Electronic Frontier Foundation, warned the decision could lead to increased bullying tactics, over-enforcement, and chilling effects that harm competition. The Court rejected these concerns, noting that the Lanham Act already provides safeguards such as fair use defenses, the crowded field doctrine, and likelihood of confusion standards. The ruling did not grant Booking.com exclusive rights to the word "booking" itself, as use of the generic term without the ".com" suffix remains permissible.