Supreme Court Says Yeah, Deserves A Trademark Registration

The Supreme Court of the United States has ruled that the United States Patent and Trademark Office (USPTO) improperly denied the registration of as a trademark based on the theory that it is a generic term. The main holding by the highest court is that just because a name (like “booking”) is generic, that alone does not render the mark that is functioning as a URL (such as generic as well.

The combination of a generic word and “.com” is not per se generic, as the USPTO previously determined.

“A term styled ‘’ is a generic name for a class of goods or services only if the term has that meaning to consumers,” states the Supreme Court opinion. “Consumers, according to lower court determinations uncontested here by the PTO, do not perceive the term ‘’ to signify online hotel-reservation services as a class.”

It makes sense. As the Supreme Court’s decision states, if was generic, then we would expect consumers who are searching for a trusted source of online hotel-reservation services to ask another traveler to name his favorite “” provider. That is just not something that is uttered, while it is common for one person to ask another what service is preferred for booking, in general.

As such, is eligible for federal trademark registration even though “booking,” on its own, is a mark that would be denied registration based on its status of being a generic term. The Supreme Court made clear in its opinion its belief that providing a registration for would not yield the owner of the mark a monopolgy on the term “booking,” distinguishing one registrable mark from the non-registrable term. The owner of has acknowledged that its registration, forthcoming, will not provide it the ability to prevent competitors from using the term “booking” without the dot com reference.

This is an important ruling for individuals and corporate entities considering going through the trademark application process and wondering whether their mark will pass muster as being outside of the scope of being labeled generic (which serves as an absolute bar to registration). It provides a bit more comfort for brands that are thinking about filing for protection of their URL’s, which we have successfully handled on behalf of clients in the past (i.e. and