Booking.com Wins Supreme Court Case to Trademark Its Name

Yolanda Curtis
July 3, 2020

The case, which made its way to the American Supreme Court, asserted that the website's name referred to a generic service, and could not be trademarked.

An appeals court ruled that the case could go forward despite a general rule against suing foreign countries in American courts, under an exception for "property taken in violation of worldwide law". Competitors should be adequately protected by fair use and other similar doctrines, allowing for the use of those terms in describing their business, while allowing for sufficient protection of legitimate registered trademarks for those domains.


In 2011 and 2012, Booking.com B.V. (Booking.com), which maintains a travel reservation website at the domain name booking.com , filed USA applications to register its service mark BOOKING.COM (word mark and stylized versions) for online hotel reservations and related services. However, the Supreme Court overturned that determination, reasoning that it was essential to take into consideration how shoppers see a identify like Scheduling.com.

US law allows trademark registrations only on terms that are "descriptive", or able to distinguish a particular product or service from others on the market. "Generic" words that refer to an entire category of goods or services, like "car" or "computer", can not be protected under the law because that would give an unfair competitive advantage to the trademark holder. "The Court rejected the PTO's argument that adding ".com" to a generic term conveys no distinguishable meaning from one provider to another. And lastly, the Court noted that that distinctiveness of mark will be determined by the term's "meaning to consumers". "That association, the Court reasoned, distinguishes the addition of ".com" from "company".


"Whether "Booking.com" is generic turns on whether that term, taken as a whole, signifies to consumers the class of online hotel-reservation services", Ginsburg wrote. "That should resolve this case: "Because 'Booking.com" is not a generic name to consumers, it is not generic".

Justice Stephen Breyer wrote in the dissent: "By making such terms eligible for trademark protection, I fear that today's decision will lead to a proliferation of "generic.com" marks, granting their owners a monopoly over a zone of useful, easy-to-remember domains". Nonetheless, the implications of the Court's decision are likely to be fairly limited.


The PTO's policy concerns do not support a categorical rule against registration of "generic.com" terms. The Court's ruling makes clear that protection will require proof that relevant consumers recognize a "generic.com" term as an indicator of source.

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