United States Patent and Trademark Office et al, Petitioners, v. Booking.com B.V.

Because domain names are a one-of-a kind commodity and a significant portion of the public will always understand a .com term to refer to a specific business, Ginsburg’s majority Supreme Court decision held that “Booking.com” and designations like it are capable as functioning as trademarks to distinguish a particular business. The District Court and the Court of Appeals for the Fourth Circuit had found that “Booking.com” was descriptive of a website offering reservation services, but that it had acquired secondary meaning for hotel booking services and now met the requirements for trademark registration. The U.S. Trademark Office argued that just as the addition of “company” to generic term does not make a business name function as a trademark, similarly the addition of “.com” to a generic term does not make a domain name function as a trademark. The Court rejected this argument, noting that while “company” only indicates that parties have formed an association to deal in certain goods, only one company can occupy a “.com” at a time. Consumers can infer that booking.com is a specific entity. Accordingly, while “.com’s” may be descriptive, individual ones may become distinctive through use and there is no per se rule against registration. The Supreme Court’s analysis is interesting, but it it seems to assume that the domain name and the trademark are unified. What is the resolution where the domain and mark subsequently become separated – if the domain name is assigned to a new owner wishing the use it only for airline services and the existing owner of the trademark decides to focus only on hotel bookings? Untethered from the unique domain name, does the mark suddenly become generic again?