SUPREME COURT RULES .COM .OK
The Supreme Court on Tuesday cleared the way for online travel agency Booking.com to trademark its name, ruling that the domain name is distinct enough to qualify for registration.
The decision rejects a sweeping argument pushed by the U.S. Patent and Trademark Office (PTO) that the combination of a generic term and “.com” cannot be trademarked. Intellectual property law in the U.S. doesn’t allow companies to trademark generic terms.
The court said in an 8-1 decision that certain combinations of two generic terms — in this case, “booking” and the domain name “.com” — are eligible for trademarking.
“In circumstances like those this case presents, a ‘generic.com‘ term is not generic and can be eligible for federal trademark registration,” Justice Ruth Bader Ginsburg wrote for the majority.
Ginsburg reasoned in her decision that consumers understand Booking.com to be a distinctive entity and not a label for a group of travel bookers.
“Under these principles, whether ‘Booking.com’ is generic turns on whether that term, taken as a whole, signifies to consumers the class of online hotel-reservation services,” she wrote. “Thus, if ‘Booking.com’ were generic, we might expect consumers to understand Travelocity — another such service — to be a ‘Booking.com.’ We might similarly expect that a consumer, searching for a trusted source of online hotel-reservation services, could ask a frequent traveler to name her favorite ‘Booking.com’ provider.”
Justice Stephen Breyer was the lone dissenter in the decision, writing in his opinion that “a top-level domain such as ‘.com’ has no capacity to identify and distinguish the source of goods or services. It is merely a necessary component of any web address.”