The U.S. Supreme Court doesn’t take an awful lot of trademark issues, but they will this year, and are taking up an interesting and potentially important question. The law has always had a long-standing rejection of “generic” trademarks – that is, no one can trademark a term that is the generic, or common name, for an item or service, thereby preventing others from using that common name. For example, you could never trademark LITE BEER for a light beer, or CONVENIENT STORE for a store that was just that.

However, Booking.com is arguing that adding “.com” to an otherwise generic term (like it’s own name), transforms an otherwise generic name into a separately identifiable mark capable of serving as a indicator of origin. Thinking it over for a moment, there’s some merit to this position. For example, I know exactly where I am gong when I enter “booking.com” or “tripadvisor.com” into my browser.

And so far, Booking.com has been getting some traction in the courts. Although the Trademark Trial and Appeal Board rejected the mark (read here), Booking.com won on both the district court level (read here) and in the Fourth Circuit (read here). As the Fourth circuit put it, the mark BOOKING.COM was not generic because, taken as a whole, the public understood the mark to represent a specific company, rather than a generic online reservation service.

The Fourth Circuit’s opinion has some limits. For example, they did not hold that adding a top level domain, like .com, .net, .biz or whatever, would automatically convert an otherwise generic second-level domain, like “booking” to a non-generic, and therefore registrable mark. They only rejected the USPTO’s contention that doing so could never yield a non-generic mark. On the facts and evidence presented, Booking.com persuaded the courts that the public viewed the mark as signifying origin.

Now we’ll see what the Supremes do with it. P.S. – The fourth Circuit opinion is very clearly written and is a great primer on the concept of genericness under trademark law.

The Business Take-Away: It seems to me that Booking.com has laid a good case out for registration of an otherwise generic term when it is couple to a top-level domain (like .com). If you’ve been thinking about trying to register such a mark, this might be a good time to make an application, while the Supreme Court is thinking it over. The USPTO’s previous rule could easily be swept away by the Justices in a single stroke. If you do, pay particular attention to establishing evidence that your mark is more than just two things  cobbled together, and that the relevant public sees your mark, viewed as a whole, as indicating your product or service.