Legal Update: Arthur Minasyan discusses last week’s U.S. Supreme Court decision that “Booking.com” is entitled to trademark protectionJuly 2020
Booking.com, a known travel-reservation company, sought to register the mark “Booking.com” with the U.S. Patent and Trademark Office (“PTO”). In response, the PTO denied the registration, stating that “Booking.com” is a generic term. Generic terms communicate the type of goods or services offered. For example, a company selling cars, would try to trademark “Cars,” i.e., its own product. Given their inability to distinguish one mark from another, however, generic terms are ineligible for trademark protection. In response to the PTO’s denial, Booking.com appealed, arguing that “Booking.com,” as opposed to simply “Booking,” is not a generic term, thus entitled to trademark protection. The appeal made its way to the Supreme Court.
The only issue before the Supreme Court was whether an otherwise generic term (i.e., “Booking”) would remain generic if coupled with “.com.” The Court said no. Writing for the majority, Justice Ginsburg stated that “Booking.com” is not generic because it is not a generic term to consumers. The Court considered the consumer public’s recognition of Booking.com as a specific business. Moreover, the Court noted that “.com” conveys a source-identifying meaning. Since only one entity can occupy a domain name, a “generic.com” term reflects an association with a particular website. In this case, there are no other businesses that could occupy the website of “Booking.com.” Thus, the Supreme Court held that “Booking.com” is not generic, allowing trademark protection.
The Court’s sweeping 8-1 holding has shed a light for trademark seekers. Undeniably, Booking.com’s success stems largely (if not entirely) from evidence of public perception and recognition. How many other “generic.com” companies can show the same? To say the least, registering a “generic.com” could be a serious venture likely prone to heavy challenges. Nonetheless, the Court’s decision seems to leave the door open to protection of what would have previously been considered generic terms, and these issues will need to be taken into account when developing new brands or attempting registration before the PTO. While seeking trademark protection of a “generic.com” term could mean implementing significant efforts to create public recognition and resisting heavy opposition, what was impossible before may be possible in the future.
Stay tuned for further developments.