Booking.com and Implications for Domain-Name Trademarks: Distinctiveness, Consumer Surveys, Functionality

This CLE course will guide trademark counsel through the Supreme Court's June 30, 2020 decision in Booking.com and its implications on brand management strategy related to domain names containing generic terms, including trademark prosecution and trademark enforcement. The panel will address the potential effectiveness of surveys in assisting the Trademark Office and courts in determining whether a domain name has acquired trademark significance, along with other best practices in preparing a generic domain name for attempted registration or enforcement as a trademark.

The Supreme Court in U.S. Patent and Trademark Office v. Booking.com B.V. held that a domain name composed of a generic word (Booking) and a generic top-level domain (.com) can qualify for trademark registration if consumers view the domain name as a composite mark that denotes a source of goods and services and not as a generic term. The Court held that a generic term with ".com" is a "generic name for a class of goods or services only if the term has that meaning to consumers." The decision opens up the playing field for companies owning well-known domain names containing only generic terms “before the dot” and allows for the opportunity for trademark protection.

The decision will likely impact the volume of applications for generic + .com domain-name composite marks and the volume of appeals to the Trademark Trial and Appeal Board of genericness refusals against generic + .com domain-name composite marks. Because the Supreme Court determined that the registrability of a generic + .com domain-name composite mark turns on consumer perception, practitioners and brand owners will want to understand the best practices in creating a record of consumer recognition for ex parte appeals.

Listen as our authoritative panel of trademark attorneys examines the Supreme Court's June 30, 2020, decision in Booking.com and the implications of the decision on brand management strategy for many notable domain names. The panel will offer best practices for registering generic domain names, including building a strong record with survey evidence and avoiding ancillary refusals such as functionality refusals. The panel will also offer insight on cost-benefit analyses for seeking registration of generic + .com domain-name composite marks.