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  • Writer's pictureJoel Cheong

‘’ Trademark Reservation Confirmed by the SCOTUS

Updated: Aug 27, 2020

After the Government announced that the Movement Conditional Order is entering the recovery phase, hotels at popular getaway destinations saw a surge in the number of reservations. Clearly, most of us wanted to seize the opportunity to break free from the prisons we call home. With so many online hotel reservation sites such as, Trivago, and Agoda, the average holidaymaker is spoilt for choice on where to get the best rates for a room with a 100MB/s broadband Wi-Fi, USB charging ports, and an Insta-worthy balcony view.

If you own a hotel reservation website, you may be interested in protecting your domain name as a trade mark, especially when that domain name has become a world famous brand. But what happens when you try to register your domain name which comprises a generic word such as ‘Booking’ combined with a top-level domain such as ‘.com’ as a trade mark at the US Patent & Trademark Office (USPTO)? A case which escalated all the way to the US Supreme Court, as it turned out.

The road to registration was not smooth for First, the US Patent and Trademark Office (USPTO) refused registration of the trade mark ‘’ on the grounds that the trade mark was generic. Then, tried to appeal at the US Trademark Trial and Appeals Board (TTAB) but was unsuccessful. Undeterred, they appealed again to the US District Court for the Eastern District of Virginia for a review. This time, the District Court found that ‘’ is not generic and therefore registrable. However, the matter didn’t end there. The USPTO, disagreeing with the District Court’s decision, filed an appeal (unsuccessful) at the US Court of Appeal for the Fourth Circuit and finally at the US Supreme Court (SCOTUS). At last, after 8 years of legal tussles, the SCOTUS (in an 8-1 decision) affirmed the appellate court’s decision and allowed the registration of the trade mark.

At the heart of the issue is whether the combination a generic word such as ‘booking’ with a generic top-level domain such as ‘.com’, would be considered generic and therefore be ineligible for trade mark registration. Generally, trade mark offices do not allow registration of generic terms as trade marks because these generic terms aren’t really helpful in enabling consumers to identify the person making the product or providing the service, nor can they help consumers distinguish a product or service of one company from another.

Consider a bar of soap wrapped in a packaging that says ‘SOAP’ and another bar of soap which is wrapped in a packaging that says ‘PAPER STREET SOAP CO.’. One would readily identify the second bar of soap as soap produced by a company named PAPER STREET SOAP CO., but absent any other indication one would have some difficulty arriving at the conclusion that ‘SOAP’ was supposed to be name of the company that produced the first bar of soap. Most would presumably regard the word ‘SOAP’ on the packaging as indicating the type of product as opposed to being the name of the company which produced it, or, in short, generic.

Secondly, if one gained the right to exclude others from using the word ‘SOAP’ for their soaps, what are other soap sellers going to name their soaps as? Slippery Cleaning Solids? Potty Mouth Busters? Marine Recruit Cleaning and Motivational Aid? Granting the exclusive right of using a generic word to a single owner would place other businesses at a severe disadvantage and prevent fair competition among businesses.

While it’s clear that generic words do not make for registrable trade marks, will adding a ‘.com’ to a generic word make any difference?

The USPTO takes the view that adding a top-level domain such as ‘.com’ is like adding a corporate designation( e.g. the word ‘Company’) to a trade mark – it only results in a generic composite and does not make the trade mark any more registrable. However, the Supreme Court disagreed, and held that a trade mark is only generic if consumers saw it that way. As consumers recognise ‘’ as a brand and not a generic word, ‘’ is therefore not generic. Additionally, a ‘’, unlike a generic term, can serve as an indicator of source due to the fact that domain names are unique. If one were to type ‘’ into their browser’s address bar, they would be taken to B.V.’s website and nowhere else. As such, consumers would be able to associate ‘’ with B.V. and its website.

Further, allowing registration of a ‘’ trade mark such as ‘’ does not create an unfair monopoly as feared by the USPTO. A trade mark can only be infringed if a competitor’s trade mark is so similar that an average user would be tricked into thinking it’s the real thing. Other companies can have the word ‘booking’ in their trade marks and coexist with the ‘’ trade mark so long as they don’t appear to be confusingly similar.

While the US Supreme Court’s decision is a big win for owners of ‘’ trade marks, the fact remains that ‘’ domain names need to be recognised as brands before owners have a chance of registering them as trade marks. If you managed to acquire a catchy and memorable ‘’ domain name, it will take a while and probably an inordinate amount of TikTok videos to make your brand viral and gain sufficient notoriety before you can register your ‘’ at the trade mark office.

On the other hand, brands which are invented, arbitrary, or fanciful are comparatively easier to register as trade marks and don’t rely so much on consumer recognition in order to be registrable. So if you have not owned and operated a website selling OEM eccentric rotating mass vibration motors named ‘’ for over 10 years, it would be easier on you to attempt registration of brands of the above nature instead of a ‘’ as a trade mark.

Thinking of registering a trade mark? Why not give us a holler? After all, we’re here to help.

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