The golden rule for trademarks is that generic names – like those that simply refer to a product or object – can’t become a trademark, while the more descriptive arks are only valid if they are directly associated with specific sources.

However, the case of the US Patent and Trademark Office (USPTO) vs. Booking.com is posing a wider question: can top-level domains transform ordinary words into trademarks?

While the federal entity rejected booking.com as a trademark when first examining the case, a District Court for the Eastern District of Virginia found the trademark to be valid, claiming that while booking on its own is a generic word, adding ‘.com’ at the end turns it into descriptive trademark, since relevant audiences now recognize the booking service as the mark’s source.

After the ruling, the patent office took the case to the Supreme Court asking it to invalidate the decision, claiming “the approach effectively eliminates the established distinction between generic and descriptive terms”.

In addition, the USPTO explains that if the booking.com trademark moves forward, other companies could be encouraged to sue their competitors for trademark infringement on the basis of using the same generic terms for goods and services in their own domains.

If the case moves to the Supreme Court, they will have the chance to clarify the extent in which ‘.com’ and ‘.net’ domains can transform ordinary words into protectable trademarks.

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Sofia Vanoli