No. 19-46
In the

Supreme Court of the United States
UNITED STATES PATENT AND TRADEMARK
OFFICE, ANDREI IANCU, UNDER SECRETARY
OF COMMERCE FOR INTELLECTUAL PROPERTY
AND DIRECTOR, UNITED STATES PATENT AND
TRADEMARK OFFICE,
Petitioners,
v.
BOOKING.COM B.V.,
Respondent.
On Writ of Certiorari to the United States
Court of A ppeals for the Fourth Circuit

BRIEF OF AMICUS CURIAE
ELECTRONIC FRONTIER FOUNDATION
IN SUPPORT OF PETITIONERS
A lexandra H. Moss
Counsel of Record
Cara L. Gagliano
Corynne McSherry
Electronic Frontier Foundation
815 Eddy Street
San Francisco, CA 94109
(415) 436-9333
alex@eff.org
Attorneys for Amicus Curiae
292994

A
(800) 274-3321 • (800) 359-6859

 i
TABLE OF CONTENTS
Page
TABLE OF CONTENTS . . . . . . . . . . . . . . . . . . . . . . . . . . i
TABLE OF CITED AUTHORITIES . . . . . . . . . . . . . .  iii
STATEMENT OF IDENTITY AND
  INTEREST OF AMICUS CURIAE . . . . . . . . . . . . . 1
INTRODUCTION AND SUMMARY
  OF ARGUMENT . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2
ARGUMENT . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3
I.   The Generic Top-Level Domain “.com” Is a
Generic Commercial Identifier Akin to an
 
Entity Designation . . . . . . . . . . . . . . . . . . . . . . . . . 3
A.  T he G ener ic Top -Level Doma i n
“.com” Was Created to Identify the
Genus of Web Addresses Belonging to
 
Commercial Entities. . . . . . . . . . . . . . . . . . . . 3
B.  “Dot Com” Has Become a Generic Term
for Companies with Web Addresses
 
Ending in .com . . . . . . . . . . . . . . . . . . . . . . . . 6
C.  “.com” Is at Least As Generic a Term
for Online Companies As “Co.” Is for
 
Offline Companies  . . . . . . . . . . . . . . . . . . . . . 7
II.  T he Decision Below Con f l ict s w ith
Comp et it ion-P rot ec t ive T ra dema rk
 
Doctrines . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8

 ii
Table of Contents
Page
A.  The Decision Below Would Impair
Businesses’ Ability to Use Domain
Names That Identify Their Goods
 
and Services . . . . . . . . . . . . . . . . . . . . . . . . . . 9
B.  Top-Level Domains Are Functional and
 
Thus Lack Trademark Significance  . . . . . 13
III.  The Public Interest Over whelmingly
Supports the PTO’s Rule That Generic
TLDs Cannot Make Gener ic Words
 
Protectable  . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 16
A.  Ne w T r a de m a rk P r ot e c t ion I s
Un necessa r y Bec ause t he DNS
A l r e a dy En su r e s t h at D om a i n
Na m e s R e l i a b l y Id e n t i f y a n d
 
Distinguish Online Businesses . . . . . . . . . . 16
B.  Extending Protection to Generic
Words Combined with gTLDs Will
Disrupt and Complicate Trademark
 
Examination Procedures  . . . . . . . . . . . . . .  17
C.  T he Fou r t h Ci rcu it ’s Approach
W i l l D i s p r o p o r t i o n a t e l y Hu r t
Small Businesses by Increasing
 
the Risk of Trademark Litigation  . . . . . . . 19
CONCLUSION . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 21

 iii
TABLE OF CITED AUTHORITIES
Page
Cases
1-800 Contacts, Inc. v. WhenU.Com,
  414 F.3d 400 (2d Cir. 2005) . . . . . . . . . . . . . . . . . . . . . . 1
Advertise.com, Inc. v. AOL Advert., Inc.,
  616 F.3d 974 (9th Cir. 2010)  . . . . . . . . . . . . . . . . . . . . 10
Anti-Monopoly, Inc. v. Gen. Mills Fun Grp.,
  611 F.2d 296 (9th Cir. 1979) . . . . . . . . . . . . . . . . . . . . . 9
Booking.com B.V. v.
United States Patent & Trademark Office,
  915 F.3d 171 (4th Cir. 2019) . . . . . . . . . . . . . . . . . . .8, 10
Bos. Duck Tours, LP v. Super Duck Tours, LLC,
  531 F.3d 1 (1st Cir. 2008)  . . . . . . . . . . . . . . . . . . . . . . 10
Goodyear’s India Rubber Glove Mfg. Co. v.
Goodyear Rubber Co.,
  128 U.S. 598 (1888) . . . . . . . . . . . . . . . . . . . . . . . . . . 3, 8
In re Hotels.com, L.P.,
  573 F.3d 1300 (Fed. Cir. 2009) . . . . . . . . . . . . . . . . . . 12
Park ’N Fly, Inc. v. Dollar Park & Fly, Inc.,
  469 U.S. 189 (1985) . . . . . . . . . . . . . . . . . . . . . . . . . . . 15
Qualitex Co. v. Jacobson Prods. Co.,
  514 U.S. 159 (1995)  . . . . . . . . . . . . . . . . . . . . . .  9, 13, 14

 iv
Cited Authorities
Page
Reno v. Am. Civil Liberties Union,
  521 U.S. 844 (1997) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1
Legislative Materials
S. Rep. No. 1333, 79th Cong., 2d Sess., 3–6 (1946) . . . . 15
Other Authorities
.booking Application Details, ICANN New Generic
  Top-Level Domains . . . . . . . . . . . . . . . . . . . . . . . . . . . 11
.booking Registry Agreement, ICANN . . . . . . . . . . . . . 11
.hotels Application Details, ICANN New Generic
  Top-Level Domains . . . . . . . . . . . . . . . . . . . . . . . . . . . 12
Am. Intell. Prop. Law. Ass’n, Report of the
  Economic Survey 2015 (June 2015)  . . . . . . . . . . . . . 20
Am. Intell. Prop. Law. Ass’n, Report of the
  Economic Survey 2019 (Sept. 2019) . . . . . . . . . . . . . 20
A ndrew A llemann, Oops, I Entr usted My
Domain Name to a Tiny Island Nation!,
  Domain Name Wire (Aug. 27, 2012) . . . . . . . . . . . . . 14
Booking.com B.V., .booking New gTLD Application
  (June 13, 2012) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11

 v
Cited Authorities
Page
Comm. on Internet Navigation & the Domain
Name Sys.: Tech. A lternatives & Policy
Impl ic at ions , Nat ’ l Resea rch Cou nc i l,
Signposts in Cyberspace: The Domain Name
  System and Internet Navigation (2005) . . 6, 7, 12, 13
How Keyword-Rich Domain Names Positively
Af fec t Sear ch Cli ck-Thr o u gh Res ult s,
  Verisign Blog (May 31, 2016) . . . . . . . . . . . . . . . . . . . 13
ICANN, Enabling a Multilingual Internet:
  ICANN & IDNs . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13
J . T h o m a s M c C a r t h y, M c C a r t h y o n
Tr a d e m ark s an d Unfair Co mpe ti ti o n
  (5th ed. June 2019 Update) . . . . . . . . . . . . . . . .  9, 10, 17
Jon DeMersseman, The Business Problems with
New Generic Top Level Domains (gTLD’s),
  LinkedIn (Aug. 20, 2015) . . . . . . . . . . . . . . . . . . . . . . 14
Kyle Bye r s , D o m a i n Ex t e n s i o n s : .c o m
vs .org, .net, .io & 4 Other TLDs (Study),
  Growth Badger (May 21, 2019) . . . . . . . . . . . . . .  15, 16
Malcolm et al., Elec. Frontier Found., Which
Internet Registries Offer the Best Protection
  for Domain Owners? (July 27, 2017), . . . . . . . . . . . . 14
Martin Pramatarov, DNS history. When and Why
  Was DNS Created?, ClouDNS (Dec. 27, 2018) . . . . . . 4

 vi
Cited Authorities
Page
NEW gTLDs URS: Uniform Rapid Suspension
 System, MFSD  . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 15
Roger Kay, Seven Things to Think About
Before You Register That New Domain,
  Forbes (Jan. 30, 2014) . . . . . . . . . . . . . . . . . . . . . . . . . 14
S oph ie Cu r t i s , Dot- Co m a t 30: Will th e
World’s Best-Known Web Domain Soon Be
 Obsolete?, The Telegraph (Mar. 15, 2015)  . . . . . . . . . 7
T o m m a s o B a r b u g l i , S t o p Us i n g . IO
Domain Names for Production Traffic,
  Hackernoon (Nov. 9, 2017) . . . . . . . . . . . . . . . . . . . . . 14
Trademark Manual of Examining Procedure
  § 1207.01(b)(vi) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10
Trademark Manual of Examining Procedure
  § 1209.03(d)  . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8
Uniform Rapid Suspension (URS), ICANN . . . . . . . . 15
VARN Original Research: How Your Domain
Name Could Be Damaging Your Business,
  VARN (Oct. 27, 2016)  . . . . . . . . . . . . . . . . . . . . . . . . . 15
Verisign, The Verisign Domain Name Industry
 Brief (Mar. 2019) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7
Welcome Registry Operators, ICANN . . . . . . . . . . . . . . 5

 1
STATEMENT OF IDENTITY AND
INTEREST OF AMICUS CURIAE1
Amicus curiae the Electronic Frontier Foundation
(“EFF”) is a nonprofit civil liberties organization that has
worked for more than 25 years to protect innovation, free
expression, and civil liberties in the digital world. EFF
and its more than 34,000 active donors have a powerful
interest in ensuring that intellectual property laws serve
the general public by promoting more creativity and
innovation than they deter.
As this Court has recognized, “[t]he Internet is ‘a
unique and wholly new medium of worldwide human
communication.’” Reno v. Am. Civil Liberties Union,
521 U.S. 844, 850 (1997). From the fledgling days of this
new medium, EFF has worked to protect its ability to
connect users and empower them to communicate freely
with each other. Indeed, EFF was one of the plaintiffs
that successfully challenged the constitutionality of the
Communications Decency Act in Reno.
As part of its mission to protect Internet users,
expression, and innovation, EFF has fought against efforts
to create new forms of trademark liability online that do
not exist in analogous brick-and-mortar contexts. For
example, EFF weighed in as an amicus in 1-800 Contacts,
Inc. v. WhenU.Com, 414 F.3d 400 (2d Cir. 2005), arguing
1.  No counsel for a party authored this brief in whole or in
part, and no such counsel or party made a monetary contribution
intended to fund the preparation or submission of this brief.
No person other than the amicus curiae, or its counsel, made
a monetary contribution intended to fund its preparation or
submission. All parties have consented to the filing of this brief.

 2
that simply using a trademark to launch an online ad could
not trigger infringement liability. The Second Circuit
agreed.
In light of its unique and longstanding mission, EFF
has a perspective to share that the parties to this appeal
do not, as neither directly represents the interests of
consumers, Internet users, or the general public.
INTRODUCTION AND SUMMARY
OF ARGUMENT
The Electronic Frontier Foundation (“EFF”) files
this brief because the Fourth Circuit’s decision was
incorrect as a matter of law, upends decades of settled
expectations, and contravenes the purposes of trademark
law to the detriment of consumer rights and competition.
As consumers, speakers, and business owners, Internet
users depend on a balanced trademark regime that avoids
Internet exceptionalism but recognizes the practical
realities of the domain name system.
The Fourth Circuit’s approach fails on both counts,
tilting the scales in favor of trademark owners by
misapplying this Court’s precedent and misconstruing
both the function and communicative impact of toplevel domain names. What is more, it sets a dangerous
precedent that will undermine competition, impede
efficient trademark review, and create new litigation
risks for small businesses that can ill-afford them. A
reversal is necessary to prevent these harms and protect
the Internet’s ability to sustain unprecedented levels of
communication, creativity, and commerce.

 3
ARGUMENT
I.  T h e G en er ic T op -L ev el D om a i n “. com ” I s a
Generic Commercial Identifier Akin to an Entity
Designation.
The Fourth Circuit’s conclusion that simply adding
“.com” to the end of a generic word or phrase can create a
protectable mark contravenes longstanding precedent. See
Pet’r’s Br. 18–21 (discussing applicability of Goodyear’s
India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128
U.S. 598 (1888)). It should be overturned on this ground
alone.
But the decision is also wrong on the facts. It ignores
the functional role .com was designed to serve within the
domain name system and the practical role it continues to
play in the eyes of the public. The .com suffix was designed
to be a generic identifier of commercial entities online, and
that is exactly what it is.
A.  The Generic Top-Level Domain “.com” Was
Created to Identify the Genus of Web Addresses
Belonging to Commercial Entities.
The communication protocols that computers use to
connect with each other over what we call the Internet
came before the domain name system (“DNS”) and generic
top-level domains (“gTLDs”) like .com. In the 1970s,
computers in the Advanced Research Projects Agency
Network (“ARPANET”) could connect to each other via
numeric Internet protocol (“IP”) addresses, but those IP
addresses were not linked to textual names that humans
could readily use or remember. Instead, ARPANET users

 4
had to know the numeric IP address associated with a
computer on the network in order to connect to it.
This became a problem as more and more computers
joined the network. Initially, to keep track of IP addresses
and their associated hosts, network users relied on a
centralized text directory (named HOSTS.TXT) that
matched IP addresses to human-readable host names. As
the number of computers connected to the network grew,
so did the number and complexity of IP addresses, and thus
the size of the text directory. This meant the network’s
growing popularity was also a potential Achilles’ heel: the
bigger it grew, the less usable it would be.
By the early 1980s, Internet pioneers had come up
with a more human friendly and scalable solution: the
Domain Name System (DNS). Technically, the DNS
is a protocol—a detailed specification of required data
structures and communication exchanges—that is part
of the Internet protocol suite. The DNS protocol sets out
a human-friendly, flexible naming convention for domain
names that DNS servers translate into machine-friendly
numeric IP addresses (and back). This makes it possible
for users to visit web addresses by typing in alpha-numeric
domain names instead of numeric IP addresses.
The heart of the DNS is its hierarchical structure,
designed to “ensure the system could accommodate
diversity without unnecessary restriction.” 2 Like phone
numbers and postal addresses, a domain name is a
combination of shared and unique information elements
2.  Martin Pramatarov, DNS history. When and Why Was
DNS Created?, ClouDNS (Dec. 27, 2018), https://www.cloudns.net/
blog/dns-history-creation-first/.

 5
that identifies a particular address. In a domain name,
each “.” (or “dot”) separates the different levels of the
information hierarchy. The top-level domain (“TLD”) is
the rightmost label—for example, “.org” in “eff.org”—and
is shared by all members of that domain, much like an
area code in a phone number.
Each gTLD is managed by a single registry operator,
which is responsible for maintaining a master database of
all domain name registrations in that gTLD and producing
a file that maps those domain names to IP addresses. 3
The label to the immediate left of the TLD—e.g., the “eff”
in “eff.org”—is the second-level domain (“SLD”). The
SLD is the element that distinguishes between different
online “parcels,” and can be analogized to the last seven
digits of a phone number. Individual web hosts (such as
Respondent) register domain names consisting of a unique
SLD–TLD combination through official registrars that
contract with the registry operators.
When the DNS was first implemented for use in
January 1985, six gTLDs were introduced. Each was
designed to identify a different category of web host, as
follows:
•  .com: commercial businesses
•  .net: network service providers
•  .org: not-for-profit organizations
3.  See Welcome Registry Operators, ICANN, https://www.
icann.org/resources/pages/registries/registries-en (last visited
Jan. 8, 2020).

 6
•  .edu: approved post-seconda r y educational
institutions
•  .gov: U.S. government entities
•  .mil: U.S. military services
Thus, the “.com” domain was created specifically
to identify commercial businesses operating online and
distinguish them from other types of web hosts.
B.  “Dot Com” Has Become a Generic Term for
Companies with Web Addresses Ending in
.com.
The first .com domain name—symbolics.com—was
registered on March 15, 1985, to Symbolics, a computer
manufacturer. For the next thirteen years, the .com
domain remained restricted to commercial entities.
This period saw the explosion of online commerce
that culminated in the so-called “dot-com boom” of
the mid-1990s. As businesses raced to get online, they
overwhelmingly selected the .com gTLD for their domain
names.4 As a result, consumers came to assume a .com
domain by default for commercial entities, which further
reinforced .com’s desirability and dominance. 5 Over time,
the widespread use of .com domain names by online
4.  Comm. on Internet Navigation & the Domain Name Sys.:
Tech. Alternatives & Policy Implications, Nat’l Research Council,
Signposts in Cyberspace: The Domain Name System and Internet
Navigation 58–59 (2005), https://w w w.nap.edu/read/11258/
[hereinafter Nat’l Research Council].
5.  Id. at 26, 57–58.

 7
businesses led to the adoption of the term “dot com” as a
generic word for an online business.6
Today, .com is open to non-commercial users but
remains the standard for online businesses. Every company
in the Fortune 500 uses a .com domain name,7 and .com is
the most popular TLD overall. As of September 30, 2019,
the .com domain name base totaled 144 million domain
name registrations—40% of all registrations in the DNS. 8
By contrast, the country-code TLD (“ccTLD”) .tk came
in at a distant second with 25.1 million registrations.9 The
second-most popular gTLD, .net, had only 13.4 million.10
C.  “.com” Is at Least As Generic a Term for Online
Companies As “Co.” Is for Offline Companies.
As this history suggests, generic top-level domains
like .com are just like other generic designations for
corporate entities, such as “company” and “co.,” and should
receive the same treatment under trademark law. See
Pet’r’s Br. 18–21. Just as those terms identify commercial
6.  Id. at 59.
7.  Sophie Curtis, Dot-Com at 30: Will the World’s BestKnown Web Domain Soon Be Obsolete?, The Telegraph (Mar. 15,
2015), https://www.telegraph.co.uk/technology/internet/11470195/
Dot-com-at-30-will-the-worlds-best-known-web-domain-soon-beobsolete.html
8.  Verisign, The Verisign Domain Name Industry Brief
(Mar. 2019), https://www.verisign.com/en_US/domain-names/
dnib/index.xhtml.
9.  Id.
10.  Id.

 8
entities offline, .com has identified commercial entities
online for more than thirty years. All .com indicates is that
the entity has a commercial presence at the corresponding
web address; it does not help Internet users distinguish
between individual dot coms.
That is why the PTO’s position is correct both as a
practical matter and as a matter of law. Simply put, adding
a gTLD like .com to a generic term cannot transform that
term into a protectible mark because .com “has no sourceindicating capacity.” Trademark Manual of Examining
Procedure § 1209.03(d) (citing Goodyear’s Rubber, 128
U.S. at 602).
II. The Decision Below Conflicts with CompetitionProtective Trademark Doctrines.
The Fourth Circuit’s decision allows website owners
to exploit trademark law to obtain competitive advantages
the law is not meant to provide. As the dissent observed,
Respondent benefits from using the generic domain name
booking.com regardless of trademark protection: it is
simple and easy to remember, and it clearly identifies the
services Respondent offers. Booking.com B.V. v. United
States Patent & Trademark Office, 915 F.3d 171, 193–94
(4th Cir. 2019) (Wynn, J., concurring in part and dissenting
in part). At the same time, awarding Respondent a
trademark registration for the string BOOKING.
COM would significantly disadvantage Respondents’
competitors, as explained in this section.
Both the genericness and functionality doctrines are
intended to limit anti-competitive misuse of trademarks—
that is, uses of trademark law that would “serve[] to limit

 9
competition in the manufacture and sales of a product.”
Anti-Monopoly, Inc. v. Gen. Mills Fun Grp., 611 F.2d 296,
301 (9th Cir. 1979) (discussing genericness doctrine); see
also Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159,
164–65 (1995) (discussing functionality doctrine). The
Fourth Circuit’s decision subverts both doctrines.
A.  The Decision Below Would Impair Businesses’
Ability to Use Domain Names That Identify
Their Goods and Services.
Allowing a business to claim trademark rights in the
combination of a generic term and a generic top-level
domain would undermine the purpose of the generic
names rule: to forestall the competitive harms of allowing
one market participant to exclude its competitors from
using a common name for their goods and services. See
J. Thomas McCarthy, McCarthy on Trademarks and
Unfair Competition § 12:2 (5th ed. June 2019 Update);
Anti-Monopoly, 611 F.2d at 301 (“The genericness
doctrine in trademark law is designed to prevent such
anti-competitive misuse of trademarks.”).
The First Circuit has explained the doctrine’s
rationale in terms of the basic purposes of trademark law:
Competitors unable to use a common term
that describes or designates their product are
at a significant disadvantage communicating
t o pot ent ia l cust omers the natu re a nd
characteristics of the product. Likewise,
consumers will be forced either to pay a higher
price to purchase the desired goods from the
seller who owns the generic term as a trademark

 10
or expend additional time investigating the
alternative products available. . . . Therefore,
in accord with the primary justifications for
protecting trademarks—to aid competition
and lower consumers’ search costs—the law
does not grant any party exclusive rights to
use generic terms as trademarks.
Bos. Duck Tours, LP v. Super Duck Tours, LLC, 531 F.3d
1, 14 (1st Cir. 2008) (internal citation omitted) (emphasis
added).
Those principles apply squarely here. Providing
trademark protection for the combination of a generic
term and a given gTLD “grants the trademark holder
rights over far more intellectual property than the domain
name itself.” Advertise.com, Inc. v. AOL Advert., Inc., 616
F.3d 974, 980–81 (9th Cir. 2010); see also Booking.com, 915
F.3d at 196 (Wynn, J., concurring in part and dissenting in
part). For example, such a mark could exclude competitors
from using that same generic term as a second-level
domain within other TLDs. For example, Respondent
might seek to exclude its competitors from using booking.
biz, booking.co, booking.inc, or booking.company as a
domain name. It would also threaten competitors’ ability
to use other second-level domains that include the same
generic term or a close variant thereof—e.g., ebooking.
com, bookings.com, or booker.com. See infra at 20. The
doctrine of foreign equivalents could further extend the
reach of this linguistic monopoly to cover words that mean
“booking” in other languages. See Trademark Manual of
Examining Procedure § 1207.01(b)(vi); McCarthy, supra,
§ 23:36.

 11
Indeed, Respondent has made clear its intent to lay
claim to the generic term “booking” more broadly. In
fact, Respondent has already reserved the proposed
top-level domain “.booking” for its own exclusive use.
In 2012, Respondent submitted an application to the
Internet Corporation for Assigned Names and Numbers
(“ICANN”) requesting the creation of a .booking
gTLD and the right to control it.11 In 2015, ICANN and
Respondent executed a contract establishing Respondent
as the registry operator for the .booking gTLD.12
Respondent’s 2012 application explains:
The main reason for which Booking.com submits
this application for the .booking gTLD is that it
wants to prevent third parties from securing a
gTLD that is identical or confusingly similar to
Booking.com’s highly distinctive and reputable
brand. . . . [I]t is first and foremost important for
Booking.com to safeguard and protect the key
element out of its BOOKING.COM trademark
at the top level of the DNS’ hierarchy.13
11.  .booking Application Details, ICANN New Generic TopLevel Domains, https://gtldresult.icann.org/applicationstatus/
applicationdetails/1590 (last visited Jan. 9, 2020).
12.  .booking Registry Agreement, ICANN, https://www.
icann.org/resources/agreement/booking-2015-07-16-en (last
visited Jan. 9, 2020).
13.  Booking.com B.V., .booking New gTLD Application
(June 13, 2012), https://gtldresult.icann.org/applicationstatus/
applicationdetails/1590 (follow “download public portion of
application” hyperlink). See also id. (describing “BOOKING” as
“the most distinctive element out of Applicant’s key brand”).

 12
Respondent’s application further explains that
“[a]t least during the initial months or even years following
the delegation of the .booking gTLD to Booking.com, . . .
parties who are not Booking.com will not be entitled to
register domain names in the .booking gTLD.” Id. In other
words, Respondent views the generic term “booking”
as the “key element” of its brand—despite arguing to
the TTAB that “[t]here is no evidence whatsoever that
consumers isolate and separately consider ‘BOOKING’
and ‘.COM’” in the purported mark (Pet. App’x 163a)—and
is endeavoring to establish a monopoly over its use in both
second-level and top-level domains.14
In the early days of the commercial Internet, users
often used domain names as a way to search for content,
which made domain names that corresponded to generic
terms especially desirable.15 Although many Internet
users now rely on search engines to find and navigate to
websites, the content of a domain name remains important
to consumers. For example, a 2015 analysis conducted by
Verisign, the registry operator for .com and .net, found
that “Internet search users are almost twice as likely to
click on a domain name that includes at least one of the
14.  Respondent has also reserved the .hotels gTLD.
.hotels Application Details, ICANN New Generic Top-Level
Doma ins, https: //g tldresult .icann.org /applicationstatus/
applicationdetails/1589 (last visited Jan. 9, 2020). Three years
before Respondent submitted that application, the Federal Circuit
upheld a genericness refusal for HOTELS.COM as a trademark
for hotel reservation services. In re Hotels.com, L.P., 573 F.3d
1300, 1301 (Fed. Cir. 2009).
15.  Nat’l Research Council, supra, at 26. See also id. at 27
& n.12 (providing example of “business.com,” which was resold
for $7.5 million in 1999).

 13
keywords in their search query.”16 This finding suggests
that a business would enjoy a significant competitive
advantage if it could exclude competitors from using
domain names that contain a generic term for their goods
and services—an obvious search keyword for consumers
seeking those very goods and services.
Introducing limitations on competitors’ use of generic
terms is especially dangerous in the context of domain
names given the technical constraints on their form
and content. For example, a domain name will always
include the [SLD].[TLD] convention and must contain
only alphanumeric characters and hyphens, rendered in
plain text.17 These constraints reduce competitive options
for crafting an effective domain name that incorporates a
generic term while avoiding the scope of a “generic-plusgTLD” mark.
B.  Top-Level Domains Are Functional and Thus
Lack Trademark Significance.
By ascribing trademark significance to .com, the
decision below also runs afoul of functionality doctrine.
Functional features are not protectable under trademark
law. Qualitex, 514 U.S. at 164–65. “The functionality
16.  How Keyword-Rich Domain Names Positively Affect
Search Click-Through Results, Verisign Blog (May 31, 2016),
https:// blog.verisign.com/domain-names/how-keyword-richdomain-names-positively-affect-search-click-through-results/.
17.  Nat’l Research Council, supra, at 87; ICANN, Enabling
a Multilingual Internet: ICANN & IDNs, https://www.icann.org/
en/system/files/files/multilingual-internet-01nov13-en.pdf (last
visited Jan. 8, 2020).

 14
doctrine prevents trademark law, which seeks to promote
competition by protecting a firm’s reputation, from instead
inhibiting legitimate competition by allowing a producer
to control a useful product feature.” Id. at 164.
Discussions of functionality typically arise in the
context of product trade dress, but they apply to TLDs
as well because different TLDs have varying functional
advantages and disadvantages. Some TLDs are more
stable and secure.18 Some lesser-known TLDs may not
be recognized by email address validation systems.19
And due to variations in the contractual terms that bind
registrants, a business’s choice of TLD may even affect its
legal rights. 20 For example, domain names in most gTLDs
are subject to ICANN’s Uniform Rapid Suspension
18.  See, e.g., Tommaso Barbugli, Stop Using .IO Domain
Names for Production Traffic, Hackernoon (Nov. 9, 2017), https://
hackernoon.com/stop-using-io-domain-names-for-productiontraffic-b6aa17eeac20; Andrew Allemann, Oops, I Entrusted My
Domain Name to a Tiny Island Nation!, Domain Name Wire
(Aug. 27, 2012), https://domainnamewire.com/2012/08/27/oops-ientrusted-my-domain-name-to-a-tiny-island-nation/; Roger Kay,
Seven Things to Think About Before You Register That New
Domain, Forbes (Jan. 30, 2014), https://www.forbes.com/sites/
rogerkay/2014/01/30/seven-things-to-think-about-before-youregister-that-new-domain/.
19.  Jon DeMersseman, The Business Problems with New
Generic Top Level Domains (gTLD’s), LinkedIn (Aug. 20, 2015),
https://www.linkedin.com/pulse/business-problems-new-generictop-level-domains-gtlds-jon-demersseman.
20.  See, e.g., Malcolm et al., Elec. Frontier Found., Which
Internet Registries Offer the Best Protection for Domain
Owners? (July 27, 2017), https://www.eff.org/files/2017/08/02/
domain_registry_whitepaper.pdf.

 15
process, an expedited procedure that trademark owners
can use to suspend allegedly infringing domain names
that meet certain criteria. 21 Domain names in .com and
certain other “legacy” gTLDs, however, are not subject
to this process. 22
Certain TLDs, again including .com, also confer
reputation- and recognition-related advantages that
have nothing to do with the domain name holder’s own
reputation and earned good will, which are the only
reputational interests trademark law is meant to protect.
See Park ’N Fly, Inc. v. Dollar Park & Fly, Inc., 469
U.S. 189, 198 (1985) (identifying purposes of trademark
protection); S. Rep. No. 1333, 79th Cong., 2d Sess., 3–6
(1946). For instance, websites that use .com and other
well-established TLDs are often seen as more legitimate
than others by Internet users. One 2019 study of eight
popular TLDs found that .com was the most trusted. 23
The same study also found that respondents were most
likely to correctly remember the TLD for .com domain
names—and most likely to incorrectly guess .com when
21.  See Uniform Rapid Suspension (URS), ICANN, https://
www.icann.org/resources/pages/urs-2014-01-09-en (last visited
Jan. 9, 2020); NEW gTLDs URS: Uniform Rapid Suspension
System, MFSD, https://urs.mfsd.it/new-gtlds-urs (last visited
Jan. 9, 2020).
22.  NEW gTLDs URS, supra.
23.  Kyle Byers, Domain Extensions: .com vs .org, .net, .io
& 4 Other TLDs (Study), Growth Badger (May 21, 2019), https://
growthbadger.com/top-level-domains/; see also VARN Original
Research: How Your Domain Name Could Be Damaging Your
Business, VARN (Oct. 27, 2016), https://varn.co.uk/10/27/70-ofpeople-dont-trust-newer-website-domains/.

 16
misremembering others.24 Respondent benefits from these
consumer perceptions of .com domain names merely by
virtue of its choice of TLD, not because of any good will it
has developed in connection with the goods and services
it offers.
If Respondent and others are permitted to register
generic terms so long as they append a TLD, their
competitors will be limited both in their ability to
accurately describe their goods and services and in their
ability to choose a TLD based on functional considerations
rather than liability risk. Such a result cannot be squared
with trademark policy and jurisprudence, which aim to
promote a system in which businesses compete on their
merits.
III. The Public Interest Overwhelmingly Supports
the PTO’s Rule That Generic TLDs Cannot Make
Generic Words Protectable.
A.  New Trademark Protection Is Unnecessary
Because the DNS Already Ensures that Domain
Names Reliably Identify and Distinguish
Online Businesses.
The DNS—not trademark protection—is what ensures
that online businesses can distinguish themselves using
domain names and that Internet users can rely on domain
names to identify and access online businesses. The
reliability of the connection between machine-readable
IP addresses and human-readable domain names ensures
Internet users experience little confusion when trying to
access the online offerings of particular businesses.
24.  Byers, supra.

 17
Extending trademark protection to domain names
consisting of generic terms combined with gTLDs will
do nothing to facilitate distinctions among businesses or
clarity in the eyes of consumers. After all, the presence or
absence of a gTLD makes little difference to the likelihood
of consumer confusion, the test of trademark infringement.
See McCarthy, supra, § 25A:43. For example, “[t]he fact
that [a] hypothetical trademark TOYOTAWHEELS.
COM for tires contains a TLD does not make it any
the less confusingly similar to [the mark] TOYOTA for
automobiles.” Id. Likewise, “[t]he fact that hypothetical
marks ALPHA.COM and GAMMA.COM both contain
the same gTLD does not make them confusingly similar”
without more. Id.
Limiting trademark protection to domain names
using non-generic SLDs comports with the structure and
operation of the DNS. By design and common usage, the
SLD serves as the unique element in a domain name—
not the TLD, which numerous websites typically share.
Trademark law should re-enforce the organizational
structure of the DNS by limiting protection to domain
names that combine gTLDs with non-generic SLDs
that can actually serve a unique distinguishing function.
Extending protection as the Fourth Circuit has done,
however, will undermine that structure and encourage
others to follow respondent’s uncreative lead.
B.  Extending Protection to Generic Words
Combined with gTLDs Will Disrupt and
C o m pl ic a t e T r a d e m a r k E x a m i n a t io n
Procedures.
Authorizing trademark protection for generic words
combined with gTLDs will do little to reduce confusion or

 18
protect goodwill. It will, however, cause substantial harm
to the PTO’s operation, and thus to small businesses and
downstream consumers.
This approach will complicate the administration
of the PTO by increasing the time, effort, and analysis
required to conduct a trademark examination in cases
such as this. Under existing law, the PTO can reject
marks consisting of generic words combined with gTLDs
as a matter of law, and it is up to the applicant to show
that the combination is greater than the sum of its parts
and primarily signifies the source of its goods or services
to consumers. The Fourth Circuit’s approach flips that
burden, forcing the PTO to prove that the combination—
i.e., booking.com—as a whole is generic.
That is not just an unduly burdensome task for the
PTO; it is often an impossible one. Once you add “.com”
to a word or phrase, you get a domain name associated
with a particular web address. Internet users may
identify “booking” and “.com” individually as generic,
and still recognize the combination as associated with
a specific web address, and thus a specific entity, not
an entire genus. See Pet’r’s Br. 40 (“A consumer who is
familiar with . . . the domain-name system can infer that
BOOKING.COM refers to some specific entity, even if
he has no prior awareness of the particular company
involved.”). But that association is attributable to the
design and implementation of the DNS, not the good will
any particular web host has built. Requiring the PTO
to find evidence that consumers consider an entire web
address ending in .com generic will practically ensure
marks like “booking.com” ultimately receive protection.

 19
At the same time, the changes required by the Fourth
Circuit’s holding will upend settled expectations and create
needless uncertainty about the application of trademark
law. The PTO’s treatment of .com is not sui generis. For
example, the Trademark Manual of Examining Procedure
provides that the prefix “e” (as in “email”) “does not change
the merely descriptive significance of a term in relation to
goods or services sold or rendered electronically” because
it “has become commonly recognized as a designation
for goods or services sold or delivered electronically.”
Trademark Manual of Examining Procedure § 1209.03(d).
If the PTO can no longer disregard a functional
and generic ending like “.com” based on the outcome of
this case, that will cast doubt on similar administrative
procedures, compounding the future uncertainty this case
will create.
C.  T h e Fo u r t h C i r c u it ’s A p p r o a c h Wi l l
Disproportionately Hurt Small Businesses by
Increasing the Risk of Trademark Litigation.
Because the Fourth Circuit’s approach will impose
new burdens on trademark examination, raise new
questions about the application of trademark law, and
open the door to unprecedented extensions of protection,
it will practically guarantee more frequent and expensive
trademark litigation.
If anything, the likelihood of trademark litigation
is especially great for marks involving generic words
like “booking.” And given the high costs of litigating a
trademark case—even when less than $1 million is at
stake, it costs upwards of $325,000 to litigate through

 20
trial 25 —increasing the likelihood of trademark litigation
disproportionately disadvantages small and fledgling
businesses. Companies with the sophistication and
resources to register marks ending in .com will have the
power to go after smaller fish, like early-stage start-ups
still operating out of home garages.
Indeed, there are already a number of other
companies with domain names incorporating the same
generic root as “booking.com,” such as “ebooking.com,”
“bookit.com,” and “simplybook.com.” These companies
would face considerably more risk of liability under
the Fourth Circuit’s approach. And they face this risk
even though their domain names are not identical to the
registered mark; for purposes of trademark liability, all
that is required is a likelihood of confusion.
Respondent’s position that the domain name “ebooking.
com” is potentially infringing (Pet’n 16 (citing C.A. App.
207)) confirms that the Fourth Circuit’s approach would
put its competitors—including those using different
domain names—at risk of liability. Even those with
meritorious defenses have to bear the staggering costs of
discovery and litigation for complaints that will ultimately
fail, but nevertheless survive dismissal or summary
judgment. And that will allow trademark litigation, not
competition and consumer choice, to determine market
outcomes for whole categories of e-commerce, like online
travel booking.
25.  Am. Intell. Prop. Law. Ass’n, Report of the Economic
Survey 2015, at 38, 62 (June 2015); see also Pet’r Br. at 30 (“noting
that the average estimated cost of a trademark infringement
suit with more than $25 million at risk has grown to more than
$3.5 million”) (citing Am. Intell. Prop. Law. Ass’n, Report of the
Economic Survey 2019, at 53, 63 (Sept. 2019)).

 21
CONCLUSION
Amicus respectfully urges the Court to confirm
that gTLDs cannot make an otherwise generic term
protectable. That rule aligns with this Court’s conclusion in
Goodyear’s and ensures that federal trademark protection
serves the purpose for which it exists: helping consumers
make informed choices so that market outcomes reflect
their preferences, not those of executive and judicial
branch officials.
January 13, 2020 

Respectfully submitted,
A lexandra H. Moss
Counsel of Record
Cara L. Gagliano
Corynne McSherry
Electronic Frontier Foundation
815 Eddy Street
San Francisco, CA 94109
(415) 436-9333
alex@eff.org
Attorneys for Amicus Curiae