SCOTUS Picks Up Case on Web-Focused Trademarks
The U.S. Patent and Trademark Office argues that Booking.com is a generic mark that cannot be registered with the PTO, because it would discourage other booking services from using "booking" as part of their domain names.
November 08, 2019 at 06:05 PM
2 minute read
Booking.com the system online hotel reservations was founded in Amsterdam in 1996
The U.S. Supreme Court agreed today to decide whether generic terms can be trademarked if they're followed by .com or another top-level domain.
The U.S. Patent and Trademark Office argues that Booking.com is a generic mark that cannot be registered with the PTO, because it would discourage other booking services from using "booking" as part of their domain names.
But the U.S. Court of Appeals for the Fourth Circuit ruled that Booking.com is a descriptive mark recognized by many consumers. Over a dissenting opinion, the court ordered the PTO to register it.
The PTO argued in its petition for certiorari that the Federal Circuit has held repeatedly that marks like Hotels.com and Lawyers.com are generic. The government also pointed to the dissenting opinion of Judge James Wynn Jr. of the U.S. Court of Appeals for the Fourth Circuit in Booking.com v. USPTO.
Wynn wrote that the decision "conflicts with the determination that every other court has reached" in similar cases.
Booking.com is represented by Foley & Lardner. The company presented survey evidence before U.S. District Judge Leonie Brinkema of the Eastern District of Virginia that 75% of consumers recognize Booking.com as a brand name. There's no evidence that consumers use "Booking.com" generically, and even the PTO admitted "that it is logically and grammatically impossible to use the name BOOKING.COM as a generic term for anything," Foley partner Jonathan Moskin and associate Eoin Connolly wrote in their opposition in USPTO v. Booking.com.
Judges Robert King and Allyson Duncan of the U.S. Court of Appeals for Fourth Circuit had agreed. They concluded that because trademarks protect only the relevant service—in this case, hotel reservations—"protection over BOOKING.COM would not necessarily preclude another company from using, for example, carbooking.com or flightbooking.com."
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