The Lanham Act (federal trademark law) does not allow generic terms to be registered as trademarks, but it does allow protection for words that are considered merely “descriptive.” Unfortunately, it’s difficult to tell where the line is.

Can you take a generic word and create a protectable trademark by adding “company” or “Inc.” after it? Not according to an 1888 Supreme Court case, Goodyear’s India Rubber Glove v. Goodyear Rubber Co. What about by adding “.com”? Following the reasoning of Goodyear’s v. Goodyear, the U.S. Patent and Trademark Office (PTO) has taken the position that adding “.com” to the end of a generic word does not result in a protectable trademark.

That spells trouble for Booking.com. The PTO has refused to register “Booking.com,” claiming that “booking” is simply the generic term for making hotel reservations. The PTO has also disallowed phrases like “hotels.com” and “mattress.com” from trademark protection for the same reason where a generic term for a service was merely combined with “.com.”

However, when Booking.com appealed its denial, a federal judge concluded that, while “booking” may be a generic term, “Booking.com” is descriptive. The court said that the mark, consisting of the two parts, should be viewed as a whole (called a “composite mark”), and not each part in isolation. Therefore, if Booking.com could show that consumers recognize the composite mark as a source identifier, as opposed to a service category, it could be protected as a trademark.

There was no evidence the public used the term “booking.com” generally, e.g., use of the term “booking.com” interchangeably with any “online booking service.” Survey evidence that a majority of consumers recognize “Booking.com” as a brand name was also persuasive. The Fourth Circuit Court of Appeals agreed.

Now, the Supreme Court has agreed to decide whether the phrase “Booking.com” is descriptive, as opposed to generic.

Good policy or overruled precedent?

The PTO argues that the reason for its longstanding policy is sound, as it prevents unfair competition and protects consumers. A generic term, the PTO says, cannot be monopolized by one industry player, even if that player devotes substantial resources toward persuading consumers that the term is a brand name. Allowing “Booking.com” to be trademarked would allow the company to prohibit other players from using the ordinary name of a service.

Booking.com claims that the PTO should not rely on Goodyear’s v. Goodyear because the Lanham Act, which was passed in 1946, overruled the old precedent. It suggests the courts use the same test the Lanham Act requires when determining whether a formerly valid trademark has become generic and is no longer protectable. That test is to determine the primary significance of the term to the relevant public. This, it argues, makes for good policy because it allows trademark owners to protect their marks and thus prevent confusion among consumers.

When is a term generic, and when is it descriptive? The Supreme Court is on the case.