Can You Trademark a Generic .com Domain Name? What Booking.com Means for Your Brand

Can you trademark a generic domain name like Booking.com, Hotels.com, or Lawyers.com? The U.S. Supreme Court settled this question in a turning-point ruling with major repercussions for domain name holders and Internet business owners. These types of web addresses are extremely clear and searchable, and many of us would probably cite their obviousness, or dare we say “genericness” as a reason not to protect them under trademark law. Under U.S. trademark law, generic terms—words that describe a class of goods or services—are not eligible for trademark protection.

For decades, domain names that joined a generic term with a generic top-level domain (gTLD) like “.com” were usually thought to be unregistrable. So names like Hotels.com, Shoes.com, or Laptops.com were assumed to be generic and not worthy of trademark rights. However, in U.S. Patent and Trademark Office v. Booking.com B.V., 591 U.S. 109 (2020), the Court decided that a domain name that pairs a generic word with “.com” might qualify for trademark protection, provided that the consuming public understands the term as a brand name and not as a designation for a kind of service.

How Do Courts Decide if a .com Domain Name Can Be Trademarked?

What the Supreme Court made clear is this: it is consumer perception that is the deciding factor.

The previous rejection of applications by the USPTO for generic .com domain names was based on a strict rule: combining a generic term with “.com” just yields a generic term. But the Booking.com decision says there is no per se rule against such marks. The right inquiry, the Court says, is: Is the domain name recognized by consumers as representing a specific business, or is it seen merely as a product/service category?

If consumers see “Booking.com” as a distinctive provider of travel services—not simply as a run-of-the-mill online booking site—then the name might very well be trademarked under the Lanham Act. It might be okay to use the name in a way that the law protects.

Do Generic .com Domains Automatically Qualify for Trademark Protection?

No. The Booking.com decision opened up the door but didn’t clear the path. Owners of domain names still need to prove distinctiveness by showing that the names they own serve to identify the sources of goods and services. That usually means producing evidence of some kind, which typically takes the following forms:

• Longtime use in business.
• Broad advertising and promotional budgets.
• Media or industry circles acknowledgment
• Consumer surveys indicating the extent of consumer connections to one single source.

The domain must have picked up a secondary meaning or acquired distinctiveness in legal terms. Absent this evidence, the application is bound for rejection at the USPTO.

Can I Trademark My Generic-Looking .com Domain Name?

The important question to ask is how the USPTO determines eligibility. When applying to trademark a domain that seems generic, the USPTO evaluates whether the mark, taken as a whole, identifies and distinguishes the goods from those of others. You should be ready to submit evidence supporting the proposition that your mark has acquired distinctiveness under Section 2(f) of the Lanham Act.

Potential Hurdles:

• Descriptive words and phrases still encounter serious difficulties.
• A logo design that is weak or derivative will not help
• If consumer perception is unclear or unproven, generic domains are often denied.

Tips to Improve Your Chances of Trademarking a .com Domain

1. Establish Brand Recognition: Market your domain as a brand through every possible marketing medium.
2. Collect Proof: Utilize customer questionnaires, Google Analytics statistics, and public relations references to demonstrate awareness.
3. Think About a Design: Registering a logo or a stylized version of your domain may be more successful.
4. Employ Uniform Branding: Consistently use the domain as a trademark (not merely as a place on the web).
5. Seek Expert Help: Apply for IP with the counsel of a reputable IP counsel specializing in trademarks rather than just a general business lawyer. Your chances of success increase when using this method.

Related Case Law

The following other pertinent cases have helped shape the analysis of trademarks for domain names:

• Hotels.com, L.P. v. Canales, No. 04-05-00315-CV, 2006 Tex. App. LEXIS 803 (Ct. App. Feb. 1, 2006) – The term “Hotels.com”, found in this case to be generic. The Federal Circuit concluded that “Hotels.com” is not a protectable trademark because adding “.com” was not enough to establish distinctiveness.
• U.S. Patent and Trademark Office v. Booking.com B.V., 591 U.S. (2020) – The Supreme Court held that “Booking.com” was eligible for trademark protection because consumers did not perceive the term “booking” coupled with “.com” as generic.
• In re Steelbuilding.com, 415 F.3d 1293 (Fed. Cir. 2005) – Upheld that the term Steelbuilding.com is not trademark eligible even end coupled with the “.com” without a showing of secondary meaning.
• In re Oppedahl & Larson LLP, 373 F.3d 1171 (Fed. Cir. 2004) – Determined that “patents.com” was just a descriptive term for services remotely similar to the act of practicing law and found no secondary meaning.

Final Thoughts: Yes, But It’s Complicated

Thus, can one obtain a trademark for an ordinary-looking .com domain name? Perhaps.

Succeeding in registering a domain name as a trademark still hinges upon whether your domain name has become distinctive and is recognized by consumers as a brand. The ruling on Booking.com made achieving that goal more attainable, though not certain.

Need Help Trademarking Your Domain Name?

Arrange a complimentary consultation now and allow us to assess the viability of your domain’s trademark eligibility.