## Facts

- Booking.com B.V. operates an online travel-reservation service under the name “Booking.com.”
- In 2011–2012, Booking.com sought federal registration of “BOOKING.COM” (word and stylized marks) for hotel- and travel-reservation services.
- The USPTO refused registration, finding the term generic, or alternatively merely descriptive without acquired distinctiveness.
- The Trademark Trial and Appeal Board affirmed, reasoning “booking” was generic for reservation services and “.com” only indicated a commercial website.
- Booking.com sought de novo review in the Eastern District of Virginia under 15 U.S.C. § 1071(b).
- The district court relied on consumer survey evidence and found that consumers primarily understood “Booking.com” to refer to a specific source; it held the mark non-generic and descriptive with secondary meaning.
- The Fourth Circuit affirmed and rejected the USPTO’s proposed categorical rule that “generic.com” terms are always generic.
- The Supreme Court granted certiorari.

## Issues

1. Whether adding a generic top-level domain such as “.com” to a generic term can yield a registrable mark under the Lanham Act.
2. Whether “generic.com” terms must be treated as generic as a matter of law, regardless of evidence of consumer perception.
3. What role consumer-perception evidence (including surveys) plays in determining genericness.

## Decision

- The Supreme Court affirmed (8–1).
- A term in the form “generic.com” is generic only if consumers understand the combined term to name a class of goods or services.
- Because consumers did not perceive “Booking.com” as a class name for online hotel-reservation services, it was not generic and was eligible for registration (subject to other Lanham Act requirements).
- The Court rejected the USPTO’s per se rule that combining a generic term with “.com” always produces a generic term.
- The Court distinguished precedent involving “generic + Company,” reasoning that domain names are unique and may convey source identification.
- The Court acknowledged that such marks are typically descriptive and, if registered, often weak and correspondingly limited in scope; standard doctrines (confusion, fair use) limit anticompetitive effects.
- A concurrence cautioned against treating surveys as conclusive; a dissent would have treated “generic.com” terms as generally generic and warned of competitive harm.

## Legal Principles

- Genericness turns on consumer understanding: a term is generic if the relevant public understands it to name a class of goods or services.
- The genericness inquiry for compound terms considers the term “as a whole,” not merely the sum of its parts.
- There is no categorical rule that “generic.com” terms are always generic; evidence of consumer perception can show the combined term is source-identifying.
- The uniqueness of domain names can contribute to source-identifying meaning in a “generic.com” term.
- Even when not generic, “generic.com” marks are often descriptive and registrable only upon proof of acquired distinctiveness (secondary meaning).
- The scope of protection for descriptive marks is limited; infringement requires likelihood of confusion, and competitors may rely on fair use and related defenses.

## Conclusion

The Court held that “generic.com” terms are not automatically generic under the Lanham Act; they are generic only when consumers understand the term, taken as a whole, to name a class of goods or services. Because consumers primarily perceived “Booking.com” as identifying a particular source, it was not generic and could be registered, with protection constrained by the rules applicable to descriptive and weak marks.


U.S. Pat. & Trademark Off. v. Booking.com B. V., 591 U.S. 549 (2020)