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When Can a Domain Name Be a Trademark? Supreme Court Will Decide



On Friday, November 8, 2019, the Supreme Court granted certiorari in United States Patent and Trademark Office et al. v. BV, to decide whether “the addition by an online business of a generic top-level domain (“.com”) to an otherwise generic term can create a protectable trademark.”

The case involves the travel website, which attempted to register its website name, BOOKING.COM, as a trademark. The United States Patent and Trademark Office (USPTO) refused registration, stating that the addition of “.com” to a generic word does not render it distinctive. The agency emphasized that federal courts have rejected trademarks for other similar names, such as,, and challenged that refusal, and the Eastern District of Virginia reversed that decision, finding that adding a generic top-level domain (GTLD) created a descriptive, not generic, term. Descriptive marks may be registered and may, through use, acquire distinctiveness enabling them to receive full protection as trademarks, while generic terms can never function as trademarks or be allowed federal trademark registration. On appeal, the Fourth Circuit affirmed, holding that “[w]hen ‘.com’ is combined with, [another term], even a generic [term], the resulting composite may be non-generic where evidence demonstrates that the mark’s primary significance to the public as a whole is the source, not the product.”

If the Supreme Court agrees with, there could be an influx of trademark applications from applicants who earlier believed that their domain names were generic and unentitled to registration. Trademark law prohibits the registration of generic terms for goods and services because they cannot indicate sources, as trademarks do, but merely embody a common term identifying goods or services that other companies must be free to use in their own advertising. The USPTO is concerned about the anti-competitive effect of allowing otherwise generic terms to achieve trademark status simply by adding a GTLD, such as “.com,” “.org,” etc.

The case is being watched not only for its outcome with regard to the protection of terms that some may consider generic, but also for a separate matter related to attorneys’ fees. USPTO policy demands attorneys’ fees in federal court cases regardless of the outcome of the case; was ordered to pay more than $76,000 to the USPTO, even though it won the Fourth Circuit suit. The Supreme Court is separately considering this policy in Peter v. NantKwest, Inc. and will decide whether the USPTO is entitled to recover attorneys’ fees and other expenses even when it loses a case. That case was argued before the Supreme Court on October 7, 2019, so we can expect definitive answers to both of these thorny trademark issues sometime next year.