Today, in a huge win for generic domains, the Supreme Court, in an 8-1 decision, ruled that, as a general matter, you CAN trademark a generic term + .com. So while you can't trademark "booking," you CAN trademark “Booking.com," rendering top tier domains more valuable than ever.
As Jess Collen wrote at Forbes.com: "The Supreme Court just this morning affirmed that an Internet domain name including a generic term – specifically Booking.com – can function as a trademark. ...
"Most small and mid-sized businesses frankly cannot afford such a high-level domain, which will often – if not usually – sell for seven-figures plus. Up until now, companies have been buying those names because they are so memorable and are common words that consumers would use to find products in a specific category. That the Trademark Office now must allow registration and that these names have been ruled protectable makes a huge advance in their value."
It’s worth taking a look at the wording in the (considerably long) decision; here are some notable excerpts:
"Generic names are easy to remember."
"Because they immediately convey the nature of the business … the owner needs to expend less effort and expense educating consumers"
"a generic business name may create the impression that it is the most authoritative and trustworthy source of the particular good or service"
SCOTUS gets it in spades.
Kate Buckley is CEO and founder of BuckleyMedia.com, a premium domains, naming and branding agency. She is an expert at premium domain consulting and brokerage, specializing in private domain acquisitions and divestments of ultra-premium domain names. Kate has personally brokered millions of dollars in both private and publicly-recorded top domains sales. A member of the ICA, Kate is also a member of the Business Constituency of ICANN.