INSIGHT not so in the US?

By Thomas Campbell
Intellectual Property Patents & Trade Marks

An opportunity for online businesses 4 min read

The US Supreme Court held that is not a generic term and can be registered as a trade mark, paving the way for registration of other '' trade marks in the US.

Key takeaways

  • An 8-1 majority of the US Supreme Court recently ruled that '' can be registered as a trade mark, reasoning that the mark is not generic as it is clearly recognisable to consumers.
  • This decision presents an opportunity for online businesses trading in the US under '' domain names to seek trade mark registration.

Who in your organisation needs to know about this?

General counsel, marketing team.

US Supreme Court's take on

The eligibility of '' for trade mark registration was considered by the US Supreme Court following an appeal from the US Patent and Trademark Office (USPTO). The USPTO had originally refused registration of the trade mark on the basis that it was 'generic'.

The central question before the court was whether BOOKING.COM is a 'generic' trade mark. Assessment of a trade mark as generic in the US means that the term refers to a broad class of goods or services and therefore should not be granted trade mark registration.

In an 8-1 majority decision the Supreme Court (with Justice Breyer in dissent) held that is not a generic trade mark and should be afforded trade mark registration. Evidence that consumers had come to recognise as a trade mark was considered by the court in making its assessment of registrability.

Integral to the decision was the rejection of the principle that a combination of a generic term with a generic top-level domain (such as '.com') is necessarily generic. The USPTO unsuccessfully argued that the court should apply the 'per se' rule. The 'per se' rule prevents an applicant from registering a trade mark which comprises a generic corporate identifier such as 'Company' or 'Inc.' and a generic name, regardless of consumer perception. The court rejected the application of the rule to the present case, observing that consumers may recognise a domain name trade mark as referring to some specific entity, such as the website's proprietor.

In dissent, Justice Breyer reasoned that the 'per se' rule should apply and that the combination of 'Booking' and '.com' has no significant meaning beyond that of its constituent parts. In his view, the combined term should be considered generic and therefore evidence of consumer recognition was irrelevant.

Implications for registration of '' trade marks in the US

The decision has ramifications for all online businesses trading in the US: it opens the door for trade mark registration of '' domain names where there is sufficient evidence of consumer recognition.

The majority dismissed any anticompetitive implications arising from its decision, stating that the fair use safeguards under US law provide adequate protection for competitors. Those provisions protect anyone from using a descriptive term 'fairly and in good faith', and not as a trade mark, to describe their own goods. The court also noted that competitors could defend an allegation of infringement by showing that use of the mark is unlikely to confuse consumers. Justice Breyer was far less optimistic about these safeguards, warning that the registration of '' trade marks will unfairly hand over monopoly rights to generic domain name holders who already hold a competitive advantage.

Generic dot com dot au?

Though the decision has implications for online business owners trading in the US, registration of the same trade mark was far less controversial in Australia. The word mark '' was registered in Australia under No 1660140 without a trip to the nation's highest court.

The test for determining whether a trade mark is distinctive under Australian law is different to that in the US, however, in light of this decision the overall approach to assessing registrability of domain name trade marks now loosely aligns. Evidence becomes critical. was registered in Australia under section 41(3) of the Trade Marks Act, meaning that evidence of use of the mark was required to convince IP Australia that at the time of filing, the mark did in fact distinguish the services from those of other traders.

The case law in Australia indicates that courts will consider each domain name trade mark on its facts. In Telstra Corporation Ltd & Anor v Phone Directories Company Australia Pty Ltd, the Federal Court found that '' may function as both a domain name and a trade mark but that '' was not considered a distinctive component of that trade mark. The factual scenario was distinguished from an earlier Federal Court decision in which the '' portion of '' was considered essential to that mark being recognisable to consumers.

Actions you can take now

Online businesses trading in the US with a generic domain name should consider seeking trade mark registration.