Article by Zara Yusuf (University of Newcastle graduate)
The key trademark case of United States Patent and Trademark Office v. Booking.com was recently concluded on June 30, after a 12-year battle. Booking.com emerged as the victor, with the US Supreme Court ruling that the term “Booking.com” is eligible for trademark registration, despite it being based on a generic term. Justice Ruth Bader Ginsburg delivered the majority opinion (8-1 decision) and the events leading up to the decision, along with the consequences of this significant victory will be examined below.
Booking.com is a leading digital travel reservation company, operating under that name and also at that domain name. It had previously applied to register four trademarks that related to its online hotel booking services, all containing the term “Booking.com”, with the US Patent and Trademark Office (USPTO). The USPTO rejected the application, on the grounds that the name was generic, even with the addition of “.com”. In order to make their case, the USPTO relied upon a US Supreme Court decision from 1888. In this case, it was held by the Court that a protectable mark cannot be created by merely adding a term like “Company” to a generic or unprotected term, which the USPTO likened to “generic.com”. Conversely, Booking.com used a principle from the Lanham Act (also known as the Trademark Act of 1946), which considers consumer perception when determining whether a trademark is protectable. Moreover, Booking.com stated that they were seeking trademark rights in order to prevent fraud, counterfeiting and cyber piracy, thus defending itself against the claims of anti-competitive effects.
Following this, Booking.com appealed to the United States District Court for the Eastern District of Virginia, which found that “Booking.com”, unlike “booking”, was not generic. Instead, the District Court concluded that the term was distinctive and therefore was eligible for trademark registration, based heavily upon survey evidence from consumers that illustrated that consumers believed “Booking.com” to be a brand. The Fourth Circuit sustained this decision.
Then, the USPTO sought centiorari from the Supreme, which the Supreme Court granted.
This was the first oral argument that the Supreme Court has ever conducted over the phone; another consequence of the coronavirus pandemic.
Ultimately, the US Supreme Court ruled that the term “Booking.com” was not generic. The Court explained that whether “Booking.com” could be defined as a generic term depended on whether the term, as a whole, was perceived by consumers to refer to the class of online hotel-reservation services. As the consumers did view “Booking.com” to refer to the brand, the Court stated that this meant that the trademark could be registered, as it could be distinguished in the minds of consumers. Also, the Court highlighted how, unlike the examples in Goodyear given by the USPTO, domain names are unique and direct consumers to a specific virtual location. This therefore shows how consumers can differentiate between “Booking.com” and other online hotel reservation providers.
Justice Breyer dissented from the majority, arguing that the majority opinion was ignoring trademark policy. He also discussed how it could set a dangerous precedent for other businesses merely adding “.com” to generic terms and still obtaining trademark registration.
Although the Court ruled in favour of Booking.com, this does not mean that all combinations of generic names and “.com” will result in trademarks being approved for registration. This was noted by the Court, which also stated that it may still be difficult for companies to prove that a generic term plus a “.com” is eligible for trademark registration.
It is likely that this decision will invite litigation, as the premises of the judgement are more fact dependent. Although, as Forbes states, it is unlikely that this will open the floodgates to litigation against small and medium-sized firms, who cannot afford such a high-level domain.
The decision serves as a key victory for brand owners, in particular those who occupy similar domains, such as “Hotel.com”, who have already invested substantial resources to build their brand. Had the USPTO’s per se rule been adopted by the Supreme Court, the trademarks of these brand owners would have been in danger of cancellation.
This judgement also recognises the growing digital era in which businesses now operate, accelerated by the Covid-19 pandemic. It shows how past precedents, such as Goodyear, need to be considered in light of current circumstances, with many businesses and their methods of operation being intertwined with technology.
Crucially, this case highlights the importance of consumer perception. It emphasises how vital it is that similar brands looking to trademark generic terms clearly convey their brands to their consumers, in order for their trademark to be registered.
 USPTO v. Booking.com B.V., 19-46.
 Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U. S. 598 (1888).