Supreme Court Issues Key Trademark Decision, Expanding Scope of Eligibility

Earlier this week, the U.S. Supreme Court ruled in favor of, a booking accommodation business that sought to trademark its domain name. The word “booking” is generic, which means that it cannot receive trademark protection on its own. However, the majority of the Court decided that adding “.com” to a generic word, such as “booking,” makes it sufficiently distinctive to qualify for a trademark if the combination acquires a secondary meaning. This decision reversed the U.S. Patent and Trademark Office, which had found that adding “.com” did not remove the generic quality of the name.

Justice Ruth Bader Ginsburg wrote the majority opinion for the Court. Only one justice, Stephen Breyer, dissented. Breyer argued that this decision opens the door for businesses across the internet to trademark a broad range of generic terms by merely adding “.com” to them. The “.com” group of domain names is among the most ubiquitous on the internet. If Breyer proves correct, a surge in trademark registration applications may soon reach the USPTO. However, the other justices felt convinced that needed protection from its competitors, which could open related businesses that might confuse consumers.

You can read the decision here at Justia. In an interesting side note, the decision resulted from the first Supreme Court oral arguments conducted over the phone. (The Court shifted to telephonic arguments earlier this year to mitigate the risks associated with the coronavirus pandemic.)