US Supreme Court Rules Eligible for Trademark Registration

In a landmark trademark decision, the U.S. Supreme Court held that was entitled to federal trademark protection

US Supreme Court Rules Eligible for Trademark Registration

US Supreme Court Rules Eligible for Trademark Registration

I<strong>n a landmark trademark decision, the U.S. Supreme Court held that was entitled to federal trademark protection</strong>

Author: David A. Einhorn|July 10, 2020

In a landmark trademark decision, the U.S. Supreme Court held that was entitled to federal trademark protection. In so ruling, the Court rejected the rule proffered by the U.S. Patent and Trademark Office (USPTO) under which combining a generic term with “.com” would yield a generic composite that may never be a valid trademark.

“Whether any given ‘’ term is generic, we hold, depends on whether consumers, in fact, perceive that term as the name of a class or, instead, as a term capable of distinguishing among members of the class,” Justice Ruth Bader Ginsburg wrote on behalf of the Court in United States Patent and Trademark Office v. B.V.

Trademark Registration Dispute operates a website on which customers can book hotel accommodations. In 2012, the company filed four federal trademark-registration applications for marks that included or consisted of the term “” The applications sought registration for use of the marks in connection with “online hotel reservation services.”

The United States Patent and Trademark Office (USPTO) refused registration. It concluded that the term “booking” is generic for the services as to which sought registration. Moreover, the addition of the generic top-level domain “.com” did not create a protectable mark.

On appeal, the U.S. District Court for the Eastern District of Virginia held that the term was not generic. The Fourth Circuit Court of Appeals affirmed. It held that the public’s understanding of, taken as a whole, establishes it as a descriptive mark rather than a generic term. In support, it cited the USPTO’s lack of evidence demonstrating that the public uses “” generically. The Fourth Circuit also placed great weight on’s consumer survey, which found that 74.8% of respondents identified as a brand name. According to the appeals court. “the survey is strong evidence that the public does not understand to refer to the proposed mark’s generic meaning.”

SCOTUS Greenlights Trademarks

By a vote of 8-1, the Supreme Court affirmed. It held that a term styled “” is a generic name for a class of goods or services—and thus ineligible for federal trademark protection—only if the term has that generic meaning to consumers.

According to the Court, whether a compound term is generic turns on whether that term, taken as a whole, signifies to consumers a class of goods or services. The Court further concluded that consumers do not in fact perceive the term “” that way. As Justice Ginsburg explained:

[W]hether “” is generic turns on whether the term, taken as a whole, signifies to consumers the class of hotel reservations services. … Consumers do not in fact perceive the term “” that way, the courts below determined. … That should resolve the case: because “” is not a generic name to consumers, it is not generic.

In reaching its decision, the Court rejected the USPTO’s proposed per se rule that when a generic term is combined with a generic Internet-domain-name suffix like “.com,” the resulting combination is generic. Justice Ginsburg explained:

A “” term might also convey to consumers a source-identifying characteristic: an association with a particular website. As the PTO and the dissent elsewhere acknowledge, only one entity can occupy a particular Internet domain name at a time, so “[a] consumer who is familiar with that aspect of the domain-name system can infer that BOOKING.COM refers to some specific entity.” Thus, consumers could understand a given “” term to describe the corresponding website or to identify the website’s proprietor. We therefore resist the PTO’s position that “” terms are capable of signifying only an entire class of online goods or services and, hence, are categorically incapable of identifying a source.

The Court also dismissed the USPTO’s concerns that trademark protection for “” could exclude or inhibit competitors from using the term “booking” or adopting domain names like “” or “” As Justice Ginsburg noted, “That concern attends any descriptive mark.” Ginsburg went on to explain that several doctrines ensure that registration of “” would not yield its holder a monopoly on the term “booking.”

Finally, the Court addressed the USPTO’s doubts that owners of “” brands need trademark protection in addition to existing competitive advantages. It found that any competitive advantages do not inevitably disqualify a mark from federal registration. “All descriptive marks are intuitively linked to the product or service and thus might be easy for consumers to find using a search engine or telephone directory. The Lanham Act permits registration nonetheless,” Justice Ginsburg wrote. “And the PTO fails to explain how the exclusive connection between a domain name and its owner makes the domain name a generic term all should be free to use. That connection makes trademark protection more appropriate, not less.”

Justice Stephen Breyer was the lone dissenter, arguing that the majority’s decision is "inconsistent with trademark principles and sound trademark policy." He wrote: "By making such terms eligible for trademark protection, I fear that today's decision will lead to a proliferation of '' marks, granting their owners a monopoly over a zone of useful, easy-to-remember domains."

Key Takeaway

The Supreme Court’s decision in United States Patent and Trademark Office v. B.V. provides assurance to brand owners that the Trademark Office may not apply a per se rule to reject trademark applications for “” marks.  Henceforth, each such trademark application must be evaluated to determine whether the applied-for term conveys a source-identifying meaning to consumers. The Court’s decision dramatically expands the availability of trademark protection for domain names. In addition, it significantly limits the number of such terms that will be deemed ineligible for trademark protection for being generic.

If you have questions, please contact us

If you have any questions or if you would like to discuss the matter further, please contact me, David Einhorn, or the Scarinci Hollenbeck attorney with whom you work, at 201-896-4100.

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About Author David A. Einhorn

David A. Einhorn

David Einhorn, Chair of the firm’s Technology Law practice group, handles diverse matters in intellectual property and technology areas. He has obtained successes in many prominent and precedent-setting cases in the fields of patent infringement, trademark infringement, copyright infringement, cybersquatting, trade name misappropriation and insurance coverage.

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