United States PTO v. Booking.com B.V.

140 S. Ct. 2298 (2020)

Quick Summary

Booking.com B.V. (plaintiff) sought to trademark its domain name against the United States Patent and Trademark Office (PTO) (defendant). The case hinged on whether ‘booking.com’ could be protected as a distinctive brand despite being built on a generic term.

The Supreme Court ruled in favor of Booking.com, deciding that consumer perception made ‘booking.com’ distinguishable as a specific service provider, thus eligible for trademark registration.

Facts of the Case

Booking.com B.V. (plaintiff) operates a travel-reservation website and sought to trademark its domain name ‘booking.com.’ The United States Patent and Trademark Office (PTO) (defendant) denied the application, asserting that ‘booking.com’ was a generic term and therefore ineligible for trademark protection under federal law.

Booking.com challenged the denial, arguing that the term had acquired distinctiveness and was recognized by consumers as identifying their specific services rather than the general category of online travel reservations.

The dispute centered around whether the addition of ‘.com’ to a generic term could transform it into a protectable trademark if consumers perceived it as distinctive.

The case progressed through the courts, with both the district court and the Court of Appeals for the Fourth Circuit siding with Booking.com, prompting the PTO to appeal to the Supreme Court.

Procedural Posture and History

  1. Booking.com applied for a trademark registration for ‘booking.com.’
  2. The PTO denied the application, finding ‘booking.com’ to be generic.
  3. Booking.com sought judicial review, and the district court ruled in favor of Booking.com, holding that ‘booking.com’ was not generic.
  4. The Fourth Circuit Court of Appeals affirmed the district court’s decision.
  5. The PTO appealed to the Supreme Court.

I.R.A.C. Format


Whether a ‘generic.com’ domain name is eligible for federal trademark registration if consumers recognize it as a specific brand rather than a generic term.

Rule of Law

A ‘generic.com’ term can be trademarked if it has acquired distinctiveness in the eyes of consumers, meaning they associate the term with a particular source or entity rather than a general class of goods or services.

Reasoning and Analysis

The Supreme Court rejected the PTO’s argument for a per se rule that would automatically classify ‘generic.com’ terms as generic, incapable of trademark protection. Instead, the Court emphasized that consumer perception is key in determining whether a term is generic.

The fact that only one entity can use a specific domain name at a time adds to its potential distinctiveness. Thus, if consumers recognize ‘booking.com’ as denoting a particular source, it is not generic and may qualify for trademark protection.

The Court also addressed concerns about granting trademark rights to ‘generic.com’ terms, noting established doctrines like likelihood of confusion and fair use that prevent excessive control over common language while still allowing some level of trademark protection.

These principles ensure that registering ‘booking.com’ would not grant an unfair monopoly over the term ‘booking.’


The Supreme Court affirmed the judgment of the Fourth Circuit, holding that ‘booking.com’ could be registered as a trademark because it was not generic in the eyes of consumers.

Dissenting Opinions

Justice Breyer filed a dissenting opinion, arguing that allowing trademark protection for ‘generic.com’ terms risks granting undue control over similar language to trademark holders and could inhibit competition.

Key Takeaways

  1. ‘Generic.com’ terms can be eligible for trademark protection if they have acquired distinctiveness in consumer perception.
  2. The Supreme Court rejected the PTO’s proposed per se rule against trademarking ‘generic.com’ terms.
  3. Trademark doctrines like likelihood of confusion and fair use protect against monopolization of common terms while allowing some level of brand distinction.

Relevant FAQs of this case

What factors contribute to a term's distinctiveness in trademark law?

In trademark law, distinctiveness is assessed by factors such as its inherent uniqueness, the length of its use in commerce, market presence, exclusivity, and the amount of advertising undertaken by the holder. The terms range from generic, which are ineligible for trademark protection, to arbitrary or fanciful, which receive the strongest protection due to their inherent uniqueness.

  • For example: The trademark ‘Apple’ for computers is considered to be arbitrary and highly distinctive as it bears no logical relationship to electronic goods, making it a strong trademark.

How does consumer perception influence genericism in trademark disputes?

Consumer perception is crucial in determining whether a term is generic or capable of serving as a trademark. If consumers recognize a term as descriptive of a general class of products or services rather than originating from one particular source, it may be deemed generic. Conversely, if consumers associate the term with a single source, it can be protected.

  • For example: If the majority of consumers come to understand ‘thermos’ as a type of insulated container, not tied to one manufacturer, it would be considered generic and not eligible for trademark protection.

What legal doctrines prevent a 'generic.com' trademark from monopolizing common language?

The doctrines of likelihood of confusion and fair use help prevent monopolization. Likelihood of confusion bars registration if consumers would likely confuse the mark with an existing one. Fair use allows others to use descriptive terms in good faith when not referencing the trademark holder specifically.

  • For example: Another travel site can use the word ‘booking’ descriptively for services offered without infringing on the ‘booking.com’ trademark as long as there is no consumer confusion or implication that they are endorsed by or affiliated with Booking.com B.V.


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