The Supreme Court of the United States clarified that domain names are not automatically excluded from trademark protection simply because they consist of a generic term combined with a top-level domain like “.com.” This decision changes longstanding USPTO practice and affects how online brands pursue federal trademark registrations.
At Jafari Law Group, we help clients understand what this ruling means for trademark strategy involving domain names and online branding.
Background: Prior USPTO Policy
Before June 30, 2020, the United States Patent and Trademark Office (USPTO) often refused to register domain names as trademarks when they combined a generic word with “.com” or another domain extension, treating the entire domain as generic and therefore unregistrable.
Under that approach, a domain like booking.com was considered unregistrable because:
- “booking” was viewed as a generic term describing the service offered, and
- “.com” was treated like other generic suffixes such as “Inc.” or “Co.”
Supreme Court Decision in Booking.com
In Patent and Trademark Office v. Booking.com B.V., the Supreme Court held that domain names must be evaluated based on consumer perception—not a rigid rule that generic words combined with “.com” are always generic.
The Court explained that whether a domain name is generic depends on whether consumers primarily understand the domain name to refer generically to a class of services or to a particular source. If consumers associate the domain with a specific business rather than the general category, it may be protectable.
Distinctiveness and Secondary Meaning
For a domain name to qualify as a trademark, it must be distinctive. That can occur in two ways:
- Inherently distinctive: Unusual or invented terms that immediately serve as brand identifiers.
- Acquired distinctiveness (secondary meaning): Common or descriptive terms that, through use and consumer recognition, have come to indicate a particular source.
In Booking.com, evidence of advertising and consumer recognition helped show that the domain was associated with a specific company rather than generically referring to online booking services.
What This Means for Trademark Applicants
This decision means domain names that once seemed too generic may now be eligible for federal registration if you can show:
- Consumers see the domain as a brand, not merely a general description; and
- Use in commerce supports that perception.
You still must overcome thresholds like descriptiveness and distinctiveness, but the Supreme Court’s ruling removes the automatic bar that the USPTO had applied.
Strategic Considerations
If your domain name is central to your brand:
- Document how consumers recognize it.
- Use consistent branding and marketing tied to the domain.
- Consider consumer surveys or other evidence that demonstrate distinctiveness.
- Understand that even a registered domain does not guarantee exclusivity; enforcement still depends on showing likelihood of confusion.
Trademark Rights and Online Branding
Trademark registration can protect your domain as part of your brand strategy. It helps prevent competitors from adopting confusingly similar domain names and gives you tools like enforcement under the Lanham Act and access to dispute mechanisms.
When to Speak With a Trademark Attorney
Domain name trademarks are a specialized area of trademark law involving distinctiveness analysis, consumer perception evidence, and USPTO practice. Whether you are filing a new application, responding to an Office action, or defending your domain as a trademark, legal guidance can help protect your rights and manage risk.
At Jafari Law Group, we help clients develop trademark strategies for domain names and digital branding. We offer a free consultation to review your situation and explain your options.
Contact Jafari Law Group today to speak with an attorney about trademark protection for domain names.