U.S. Supreme Court Justice Ruth Bader Ginsburg speaks at the Association of American Law School's annual meeting, Jan. 4, 2020.

Companies using otherwise generic terms for their websites are eligible for trademark protection if the domain is distinct to the general public, according to the U.S. Supreme Court, which struck down a broad federal rule that blocked Booking.com from registering its mark.

While the term "booking" on its own, like countless other one-word phrases, is generic and ineligible for trademark protection, Booking.com has taken on a secondary meaning with the public, wrote Justice Ruth Bader Ginsburg for the majority. The justices noted that upholding the U.S. Patent and Trademark Office's application of the rule would strike down trademarks it already granted to Dating.com and Art.com.

"A term styled 'generic.com' is a generic name for a class of goods or services only if the term has that meaning to consumers," Ginsburg wrote. "Consumers, according to lower court determinations uncontested here by the PTO, do not perceive the term 'Booking.com' to signify online hotel-reservation services as a class. In circumstances like those this case presents, a 'generic.com' term is not generic and can be eligible for federal trademark registration."

Justice Sonia Sotomayor filed a concurring opinion while Justice Stephen Breyer was the lone dissent.

Breyer, in his dissent, said adding .com to the end of a generic name adds no distinctive meaning that's entitled to trademark protection.

"[A] top-level domain such as '.com' has no capacity to identify and distinguish the source of goods or services," Breyer wrote. "It is merely a necessary component of any web address. When combined with the generic name of a class of goods or services, '.com' conveys only that the owner operates a website related to such items.

Stephen Breyer (courtesy photo)

Amsterdam-based Booking.com B.V., represented by Williams & Connolly, Debevoise & Plimpton and Foley & Lardner at the Supreme Court, said it had invested $5 billion in its name and wanted to protect that investment. Numerous amici curiae with generic top-level domain name brands, such as Salesforce.com, Cars.com and Dictionary.com, supported Booking.com's case.

Debevoise & Plimpton partner David Bernstein praised Tuesday's ruling for relying on consumers to determine whether a phrase is generic.

"This decision is a victory for countless brand owners that have invested significant resources in building their brands—such as Weather.com, Law.com, Wine.com and Hotels.com, as well as others like Home Depot, Salesforce, TV Guide, Pizza Hut, and The Container Store—whose trademarks, the court acknowledged, would have been at risk if the government's position was accepted," Bernstein said in a statement.

The USPTO had argued that simply adding .com to a generic word doesn't make it any less generic. The agency pointed out that more than 100 years ago, the Supreme Court ruled that the addition of "Company" didn't transform an otherwise generic brand. It also cited more recent decisions from the U.S. Court of Appeals for the Federal Circuit on names such as Hotels.com.

A long-standing rule of trademarks is that generic names cannot be registered. For example, a business selling apples could not register Apples or The Apple Company because it would allow that company to monopolize the name of the product. Even without federal registration, a valid trademark can still be enforced against would-be infringers. But registration confers additional legal rights and benefits, such as constructive notice of the mark.

Booking.com won a split decision at the Fourth Circuit. Judge Allyson Kay Duncan wrote for the majority that Booking.com is a descriptive mark that is recognized by many consumers. Dissenting Judge James Wynn Jr. wrote that the decision "conflicts with the determination that every other court has reached" in similar cases.

A Williams & Connolly partner argued for Booking.com that the 1946 Lanham Act had "repudiated" the Supreme Court precedent, and that the PTO doesn't even follow the rule it was advocating, having registered generic top-level domains such as Tickets.com and Weather.com.

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A Dot-Com Amicus Army Is Volunteering for Booking.com