On June 30, 2020, the Supreme Court of the United States (SCOTUS) ruled in favor of Booking.com in their long-running dispute with the United States Patent and Trademark Office (USPTO), rejecting the agency’s claim that any generic term combined with a generic top-level domain (“.com,” etc.) is automatically ineligible for registration. Though numerous factors went into the decision, SCOTUS ultimately ruled on the basis that Booking.com was able to demonstrate, through surveys and related evidence, that the domain name signifies unique meaning in the perception of consumers, making the trademark distinguishable from common uses of the generic term.
The SCOTUS ruling marks a historic shift in trademark law, particularly in the process of evaluating the genericness of an applied-for mark. In October 2020, the USPTO issued new guidance for attorneys tasked with determining the eligibility of marks containing what they call “generic-dot-com” terms. Although the changes are…