Insights

“What is in a (Domain) Name? The Importance of Consumer Perception”

November 29, 2020
HotelExecutive

On June 30, 2020, the Supreme Court, in the last opinion written by the late Justice Ginsberg, ruled that Booking.com, a generic “.com” term familiar to many in the leisure and business travel industry, could function as a trademark if consumers of internet/online hotel reservations services recognize the mark as an indication of the source for such services. Marshall Gerstein attorneys Maureen Beacom Gorman, Jeremy Kriegel, and Kelley Gordon recently explained the implications of this decision and key considerations for brands who may wish to capitalize on this new development for traditionally generic marks.

In their article, "What is in a (Domain) Name? The Importance of Consumer Perception," which was published in HotelExecutive on November 29, the authors explain the Supreme Court rejected the USPTO’s argument for a bright line rule that prohibits trademark protection for every generic.com mark, yet also maintained that generic.com marks are not automatically protectable trademarks. They write, “The Booking.com decision places consumer perception of generic marks (and secondary meaning of generic marks) squarely in focus for any brand considering either type of mark with a .com affiliation.”

The authors continue, “Following the Booking.com Supreme Court decision, brands now have an incentivized opportunity to either apply or reapply for trademark registration of a generic.com mark.” They encourage hotels, restaurants, casinos, cruise lines, theaters, event venues, sports teams, online travel agencies, and others in the hospitality industry consider brand recognition as part of their long-term brand protection strategy.

Read Maureen, Jeremy, and Kelley's article "What is in a (Domain) Name? The Importance of Consumer Perception" by visiting HotelExecutive.