21 February 2020TrademarksRory O'Neill

Domain traders urge SCOTUS to protect ‘generic’ domains

Domain-owners group the Internet Commerce Association (ICA) has urged the US Supreme Court to protect trademarks such as ‘’, which the US Patent and Trademark Office (USPTO) says are generic.

In an amicus  brief filed on Wednesday, February 19, the ICA said that the US government’s position would result in the “devaluation of a significant class of IP assets”.

The USPTO has argued that adding generic top-level domains, such as .com, to “generic” terms such as “booking”, cannot result in a protectable trademark. argues that terms such as ‘booking’ are better characterised as descriptive terms which, with the suffix .com, have acquired distinctiveness through use.

The government is asking the Supreme Court to reverse a decision of the US Court of Appeals for the Fourth Circuit, which ruled that such trademarks are protectable “where evidence demonstrates that the mark’s primary significance to the public as a whole is the source, not the product”.

In that case, the Fourth Circuit approved the registration of “” as a trademark, on the grounds that it was able to indicate the commercial origin of the services. is a flight and hotel search engine founded in the Netherlands in 1996 and is ranked 69th for global web traffic by internet analysis company Alexa.

Undermining brands?

According to the ICA, the government misread the Fourth Circuit as ruling that generic top-level domains added to a term like ‘booking’ “automatically results in a protectable trademark”.

The ICA is a body of domain name investors, many of whom manage or sell domain names to companies. Its members include major domain name registrar GoDaddy and domain trading platform Sedo.

In its brief, the ICA said that the Fourth Circuit’s decision should be upheld, as it only provides for the registration of such marks where there is evidence that they indicate the commercial origin of the goods or services.

To rule that these domains can never be protectable as trademarks would “seriously undermine valuable IP assets”, the ICA argues.

“The resulting devaluation of domain names would harm owners who have heavily invested in the goodwill of their operating businesses and would also reduce the societal benefits envisioned by trademark law,” the court filing stated.

The ICA also argued that, if adopted, the government’s position would undermine brand owners’ efforts to tackle forms of online infringement such as cybersquatting, or “typosquatting” (the misspelling of a brand’s name in a domain so as to confuse consumers).

“Trademark law is a critical tool for thwarting typosquatting, domain name hijacking, and other domain name abuses,” the ICA brief stated.

The amicus brief was filed by law firm Wiley Rein on behalf of the ICA.

Megan Brown, who leads the firm’s cybersecurity and privacy practices, described the case as a “sleeper” which could have unintended negative consequences if it goes in favour of the US government.

“I worry about harmful consequences from the government’s theory on vital tools to prevent domain name abuse like typosquatting and cybersquatting,” Brown said. “The Supreme Court should consider these consequences before it accepts the government’s novel trademark theory.” has also attracted the support of the International Trademark Association (INTA), which said the Supreme Court should not impose a “per se” rule when “drawing a line between generic and descriptive marks”.

“Imposing a per se rule would immunise decisions from evidence of consumer perception, which ought to be the guiding light,” the INTA brief said.

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