SCOTUS Rules that Addition of Top-Level Domain to Generic Term Can Create Protectable TrademarkJuly 6, 2020

When the United States Supreme Court granted certiorari in U.S. Patent and Trademark Office v. back in November, the question was whether a generic term such as “booking” could constitute a protectable trademark when accompanied by “.com.” In an 8-1 decision issued last week, the Court has answered this question with a resounding “yes.”

The case before the Court stems from the USPTO’s denial of travel company’s applications to register various trademarks containing the term “” for online hotel reservation services on the basis that the term “Booking” was generic as applied to such services and that the addition of “.com” did not alter or render unique or creative the commercial impression of the applied-for mark. The United States District Court for the Eastern District of Virginia disagreed, stating that, when combined with a generic “second-level domain” (such as “booking”), a “top-level domain” (such as “.com”) generally has source identifying significance, and concluding that “the combination of [the two] is generally a descriptive mark that is protectable upon a showing of acquired distinctiveness.” On appeal, the United States Court of Appeals for the Fourth Circuit affirmed the decision of the District Court, concluding that “,” taken as a whole, is not generic.

In a majority opinion authored by Justice Ruth Bader Ginsburg, the Supreme Court ultimately agreed with the lower courts. The Court explained that “whether ‘’ is generic turns on whether that term, taken as a whole, signifies to consumers the class of online hotel-reservation services.” Because the lower courts had determined, and the USPTO no longer disputed, that consumers in fact do not perceive the term “” that way, the Court concluded that the term is not generic. In doing so, the Court rejected the USPTO’s nearly per se rule that a generic term combined with a generic Internet-domain suffix like “.com” is still generic, explaining that such a rule is not borne out by the USPTO’s own past practice and lacks support in trademark law and policy. Instead, the Court called for a fact-specific and consumer-driven approach.

Ultimately, the Court’s holding in this case was simple: “Because ‘’ is not a generic name to consumers, it is not generic.” The corresponding takeaway is also simple: domain names (even those comprised of generic terms) will not be considered generic by the USPTO. Instead, the difficulty will now lie in establishing whether a domain name has the requisite distinctiveness to constitute a valid trademark. 

A copy of the Supreme Court’s Opinion can be found here.

icholas J. Krob is an Associate Attorney in the TrademarkLicensing, and Litigation Practice Groups at McKee, Voorhees & Sease. For additional information, please visit or contact Nicholas directly via email at

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