, a generic term turning into a brand? - domain name - domain name
Image source: Julius_Silver via Pixabay

A trademark must be “distinctive”, which is why no one can register a generic term as a trademark.

However, a decision of the US Supreme Court on June 30, 2020 allows to register its domain name as a trademark.

If for USPTO (U.S Patent and Trademark Office), “booking” is a generic term, and adding the .COM would amount to adding “Company” to a name, thus arguing that cannot be registered as a trademark, the Court decided otherwise.

Indeed, it considered that “.COM” could not be compared to “company” since the essential criterion would be the identification of consumers.

In particular, the online travel company presented consumers surveys indicating that 75% of consumers thought was a brand.

Of course, this first argument, easily challenged by Judge Breyer, was not the one that hit the nail on the head in the final decision. Since a domain name can only belong to one holder, the risks of confusion that must be avoided by trademarks could not arise here, since no one else can use the name

Despite the registration of the trademark, the company will not be able to use it as a trademark right in disputes that could oppose it to other companies using the generic term “booking” in their trademark.

To read the full decision, click here.

Author: Lucie Loos

Marketing & Communication Director - Nameshield group