“Generic“ website names can be trademarked in the US


The ruling of the US Supreme Court in Booking.com will probably lead to a breakthrough in trademark regulation in the United States. The United States Patent and Trademark Office ("USPTO") has always refused to acknowledge similar trademarks, referring to the precedent from 1888, according to which generic words followed by an abbreviation for a company such as "Company" and "Inc." do not have sufficient distinctive character. "Booking" is a general word that also expresses the type of services that Booking.com B.V. and its competitors offer. The USPTO do not see generic words with generic suffix “.com” as trademarkable.

However, the dispute end up at the US Supreme Court, which surprisingly ruled that the booking.com trademark is valid (this case was the first one for which the US Supreme Court used a teleconference system for oral arguments). The main argument for trademarkability was a public opinion poll, which showed that almost three quarters of respondents perceive "Booking.com" as a specific brand and not as a general generator of hotel reservations. The main argument was then expressed by one of the judges in a simple quote
"Whether “Booking.com” is generic turns on whether that term, taken as a whole, signifies to consumers the class of online hotel-reservation services…Consumers do not in fact perceive the term “Booking.com” that way…That should resolve this case: Because “Booking.com” is not a generic name to consumers, it is not generic.”
Judge Stephen Breyer's only dissenting voice objected that the suffix ".com" does not have the ability to distinguish between individual competitors, as it is an essential part of a web address.

European regulation is generally more benevolent. The European Union trademark "Booking.com" was registered as early as 2008. The situation in the Czech Republic is similar to that in the USA, as the IPO rejects similar trademarks due to insufficient distinctiveness (e.g. decision of the President of The Industrial Property Office of 29 May 2012, file no .: O-483013, case “www.zateplenidomu.cz”). The registration of trademarks consisting of sufficiently distinctive words in connection with the domain suffix is no longer a problem, see valid national trademarks such as "Volný.cz" and "atlas.cz". Some companies even deliberately select certain domain suffixes and creatively incorporate them into their brand as in an example of the national trademark "ulož.to" which has been valid since 2014.

Jeroným Šubrt, 24.07.2022