High Court Rules in Favor of Booking.com Trademark Registration

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  • July 01, 2020

On June 30, 2020, the U.S. Supreme Court ruled that online travel agency Booking.com may register its name as a trademark at the United States Trademark Office (USPTO). The ruling rejects the USPTO's argument that the term is generic, and by definition, unprotectable as a trademark.

In an 8-1 vote, the justices ruled  in favor of Booking.com stating that the addition of the ".com" to the generic word "booking" transformed the resultant term into a protectable trademark.

Justice Ruth Bader Ginsburg, writing for the majority, said consumers viewed the name Booking.com as a distinctive marker of a particular company, similar to that of competitor travel service Travelocity.  Ginsburg wrote, "Because 'Booking.com' is not a generic name to consumers, it is not generic."

Booking.com has sought to register its name at the USPTO for more than eight years. After the USPTO originally refused to register the name, Booking.com sought judicial review at the District Court, which determined "Booking.com" is not the same as the term "booking," and is not generic.  The Court of Appeals affirmed the  lower court's decision. The USPTO took the case to the Supreme Court, arguing that to allow the registration would grant Booking.com and other companies monopoly power over basic terms, leading to anticompetitive behavior.  The USPTO sought a strict  rule stating that adding a ".com" at the end of a simple generic term would always be unprotectable.

The Court rejected the rule in favor of a more flexible approach that examines how consumers perceive a web address. Going forward, trademark applicants facing distinctiveness rejections at the USPTO will benefit by including supportive consumer perception evidence in their responses whenever possible.  Survey evidence, while not definitive, is likely to become more common.

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