Whether the addition of “.com” to a generic term qualifies for trade mark protection?
In the year 2011, Booking.com, a travel and hotel accommodations company, filed four trade mark applications for Booking.com. The USPTO rejected the said applications on account of the mark being too generic, in the year 2016.
The Lanham Act specifically prohibits the registration of generic trade marks. Generic trade marks are common terms used to name products or services, for example, a brand of shoes called “shoes”. Generic trade marks describe a product and hence these marks do not qualify for any protection. However, drawing reference to the evidence presented before the lower Courts, it was observed that the consumers viewed Booking.com as a brand, the said term thereby acting as a source identifier and not as a generic service. Therefore, the US Court of Appeals held that Booking.com is not generic since the USPTO had not shown any evidence that the public would tend to view Booking.com as a room booking site. The US Supreme Court is now left to adjudge the long pending dispute. It is to be noted that the US Courts have refused to grant registrations to marks such as Hotels.com and Lawyers.com in past.