Secondary Meaning Key to Proving ‘Generic.com’ Domain Names Not Necessarily Generic

The U.S. Patent and Trademark Office (USPTO) declined Booking.com B.V.’s application to register “booking.com” on the Principal Register for travel-related services. Booking.com, a digital travel agency, took the case to the U.S. District Court for the Eastern District of Virginia which relied on new evidence in its decision that “Booking.com” was not generic, but instead had acquired secondary meaning. The USPTO appealed to the Fourth Circuit. Throughout the case, the USPTO pressed forward with its belief that adding “.com” to a generic word “is necessarily generic”. And generic terms can not be trademarked. After a loss in the Fourth Circuit, the USPTO appealed to the Supreme Court which ruled in favor of Booking.com. While the decision doesn’t protect all “generic.com” websites or businesses, it opens the door for those businesses to prove their domain name has secondary meaning and isn’t automatically generic. Read more about the Booking.com generic trademark case.