By a close to unanimous decision of 8-1, the U.S. Supreme Court on the last day of June 2020, decided in favor of Booking.com holding that generic words coupled with “.com” are eligible for federal trademark registration if consumers do not understand such words as generic.
How It All Started
You have probably heard of the popular digital travel company, Booking.com. A decade ago Booking.com filed to register its name at the United States Patent and Trademark Office (“USPTO”). But the office denied the registration on the grounds that the name Booking.com was too generic. Generic names are not eligible for federal trademark protection. The refusal was affirmed by the Trademark Trial and Appeal Board of the USPTO.
After that, the case worked its way through the court system. The U.S. District Court for the Eastern District of Virginia reviewed the USPTO’s decision and said that “Booking.com” was actually not a generic name for hotel reservation services and thus, was entitled to federal registration. This decision was affirmed by the U.S. Court of Appeals for the Fourth Circuit.
As the highest court in the country, the U.S. Supreme Court (listening to its first-ever virtual oral argument) further affirmed the decision of the appellate court, rejecting the USPTO’s key concern about competitors’ protection.
The decision underscores the importance of consumer perception in trademark law and the evolution of trademark principles. The most vital piece of evidence relied on by Booking.com throughout the trial was a consumer survey, which demonstrated Booking.com’s reputation, marketing, and commercial success, thereby highlighting the fact that consumers do not view “Booking.com” as a generic name for hotel reservation services, but rather, identify it with the company’s brand.
The Supreme Court’s decision stated that “Because ‘Booking.com’ is not a generic name to consumers, it is not generic.” This further emphasizes that consumer perception is the hallmark of this decision and by extension, trademark law.
How “.com” Changed The Game
During the trial, the generic nature of the word “booking” as a stand-alone term for hotel-reservation services was not in issue.
Hence, what the court examined was whether the combination of an agreed generic word (“booking”) with “.com” is generic. In the end, the court decided that “Booking.com” as a whole was not generic and thereby, merited federal trademark protection. Safe to say “.com” rescued the entire brand name.
Competitor Protection Still Intact
As a key trademark principle, the generic name rule protects the ability of competitors to use the terms they need to describe their products. The USPTO expressed a principal concern that allowing registration of Booking.com infringes on the competitors’ ability to use generic marks in describing their competitive products.
The court opined on the contrary. It stated that any potential harm on competition has already been toned down by the need for the trademark owner to show a likelihood of confusion in a trademark infringement and it is unlikely for consumers to be confused by similarities between the generic components of a generic name plus “.com” and other businesses using similar words.
The Booking.com’s case not only tells you why you should register your trademark but also why you should engage IP experts who can handle the complexities of the process and assist in defending your position in the event of any objection by the USPTO. The attorneys at Quest specialize in trademark registration, trademark consulting, and trademark infringement as well as other kinds of intellectual property law.
If you are a small business owner looking to register a trademark, contact Quest today. We can help you decide if your mark is registerable and help you through the entire process.