Booking.com - A Major Change In Trademark Rights.
Disclaimer- The following is for informational content only and should not be construed as legal advice.
Booking.Com- A major change in trademark rights
On June 30, 2020, the US Supreme Court decided the matter of USPTO v. Booking.com. It was a major milestone in trademark law and application. As an interesting side note, this was the first-ever Supreme Court case that was live streamed and heard through remote oral arguments. In summary, the high court ruled in favor of Booking.com and rejected the PTO’s bright line rule against registering a “generic” word plus domain combinations, such as “.com” “.biz”.
A “generic” is a term that is understood by the public as the common term for a product or service. For example, an “apple” is the generic term for a type of fruit, while a “chair” is a generic term for the thing you sit on everyday. These default terms cannot relate back to a single source of the good or service because the term are those that everyone uses for a particular thing. The purpose of registering a trademark is to identify a single source of goods or services, so it makes sense why trademark law prohibits generic terms from being registered as a trademark.
In the dispute, the USPTO refused to register BOOKING.COM, taking the position that the term “booking” is a generic for reservations, and merely adding “.com” does not make the term any less generic. The Supreme Court has now rejected the PTO’s bright line rule with respect to “generic.com” trademarks, holding that a generic name combined with “.com” alleviates the generic designation, at least for trademark purposes.
Up until this decision, the PTO had always rejected generic.com trademark applications, so its important to understand why the Court departed from this long-established rule. The US Supreme Court focused mainly on the fundamental principal that the strength of the mark depends on how they are perceived by the consuming public. Booking.com established the strength of its trademark through consumer surveys that showed 74.8% of the respondents recognized Booking.com as a brand name. As such, even though “booking” is a generic term and therefore unregistrable, “booking.com” is viewed by the majority of its users as an actual brand, rather than just a generic term and domain name combination.
The Court’s ruling is a big win for Booking, and also for other companies that have struggled in their attempts to obtain federal trademark registration for their generic brand names. In light of this new rule, companies can develop a strategy to use their domain names as brands more actively and register them as a “generic.com” trademark. Prudence is still warranted, however, as even with this decision, the PTO can always reject a trademark application, and will still require evidence showing the strength of the domain name trademark.
Trademark applications should always be submitted with the help and assistance of qualified attorneys who understand how to avoid rejections from the PTO.