United States Supreme Court Allows Booking.com as a Federal Trademark

Walker, JeremyBy Jeremy T. Walker

In a decision issued on June 30, 2020,[1] the United States Supreme Court ruled that the domain name “Booking.com” was entitled to federal trademark protection.  With an 8-1 majority, the Court surprised many in the intellectual property community because the decision seemingly contradicts longstanding trademark jurisprudence that prohibits generic terms from receiving trademark protection.  Generic marks are those used to describe common terms or categories of goods such as cars, bikes, hats, etc.  Because these are terms that are commonly used, they are not afforded any trademark protection.  Otherwise, businesses could register these generic terms as trademarks and unfairly prevent competitors from using those terms to sell like products.

The United States Patent and Trademark Office (“USPTO”) previously rejected Booking.com as generic because the term “booking” is commonly used by hotels and related businesses for the process of reserving rooms.  The USPTO decided that a generic term remains generic despite the addition of the .com and use as a domain name.  But the Supreme Court relied on evidence that Booking.com was recognized by consumers as a unique source of services, and thus, was not truly generic.

Justice Breyer, the lone dissenting vote, asserted that Booking.com is generic and refers simply to an internet booking service.  He wrote:  “By making such terms eligible for trademark protection, I fear that today’s decision will lead to a proliferation of “generic.com” marks, granting their owners a monopoly over a zone of useful, easy-to-remember domains.”  Time will tell if Justice Breyer is correct.  On the other hand, many applaud the decision as necessary for those brand owners that have invested considerable resources in protecting their online brands, such as Hotels.com, Cars.com, etc.  Without any trademark protection available, these companies may not be able to effectively stop competitors from unfairly trading off the goodwill associated with their domain names.

 

[1] Patent and Trademark Office v. Booking.com B.V., No 19-46 (U.S. June 30, 2020)

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