Booking.com the system online hotel reservations was founded in Amsterdam in 1996SCOTUS 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
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."
This content has been archived. It is available through our partners, LexisNexis® and Bloomberg Law.
To view this content, please continue to their sites.
Not a Lexis Subscriber?
Subscribe Now
Not a Bloomberg Law Subscriber?
Subscribe Now
NOT FOR REPRINT
© 2024 ALM Global, LLC, All Rights Reserved. Request academic re-use from www.copyright.com. All other uses, submit a request to [email protected]. For more information visit Asset & Logo Licensing.
You Might Like
View All
Texas Court Invalidates SEC’s Dealer Rule, Siding with Crypto Advocates
3 minute read
Read the Document: 'Google Must Divest Chrome,' DOJ Says, Proposing Remedies in Search Monopoly Case
3 minute read
Apple Asks Judge to 'Follow the Majority Practice' in Dismissing Patent Dispute Over Night Vision Technology
Trending Stories
- 1Gibson Dunn Sued By Crypto Client After Lateral Hire Causes Conflict of Interest
- 2Trump's Solicitor General Expected to 'Flip' Prelogar's Positions at Supreme Court
- 3Pharmacy Lawyers See Promise in NY Regulator's Curbs on PBM Industry
- 4Outgoing USPTO Director Kathi Vidal: ‘We All Want the Country to Be in a Better Place’
- 5Supreme Court Will Review Constitutionality Of FCC's Universal Service Fund
Who Got The Work
Michael G. Bongiorno, Andrew Scott Dulberg and Elizabeth E. Driscoll from Wilmer Cutler Pickering Hale and Dorr have stepped in to represent Symbotic Inc., an A.I.-enabled technology platform that focuses on increasing supply chain efficiency, and other defendants in a pending shareholder derivative lawsuit. The case, filed Oct. 2 in Massachusetts District Court by the Brown Law Firm on behalf of Stephen Austen, accuses certain officers and directors of misleading investors in regard to Symbotic's potential for margin growth by failing to disclose that the company was not equipped to timely deploy its systems or manage expenses through project delays. The case, assigned to U.S. District Judge Nathaniel M. Gorton, is 1:24-cv-12522, Austen v. Cohen et al.
Who Got The Work
Edmund Polubinski and Marie Killmond of Davis Polk & Wardwell have entered appearances for data platform software development company MongoDB and other defendants in a pending shareholder derivative lawsuit. The action, filed Oct. 7 in New York Southern District Court by the Brown Law Firm, accuses the company's directors and/or officers of falsely expressing confidence in the company’s restructuring of its sales incentive plan and downplaying the severity of decreases in its upfront commitments. The case is 1:24-cv-07594, Roy v. Ittycheria et al.
Who Got The Work
Amy O. Bruchs and Kurt F. Ellison of Michael Best & Friedrich have entered appearances for Epic Systems Corp. in a pending employment discrimination lawsuit. The suit was filed Sept. 7 in Wisconsin Western District Court by Levine Eisberner LLC and Siri & Glimstad on behalf of a project manager who claims that he was wrongfully terminated after applying for a religious exemption to the defendant's COVID-19 vaccine mandate. The case, assigned to U.S. Magistrate Judge Anita Marie Boor, is 3:24-cv-00630, Secker, Nathan v. Epic Systems Corporation.
Who Got The Work
David X. Sullivan, Thomas J. Finn and Gregory A. Hall from McCarter & English have entered appearances for Sunrun Installation Services in a pending civil rights lawsuit. The complaint was filed Sept. 4 in Connecticut District Court by attorney Robert M. Berke on behalf of former employee George Edward Steins, who was arrested and charged with employing an unregistered home improvement salesperson. The complaint alleges that had Sunrun informed the Connecticut Department of Consumer Protection that the plaintiff's employment had ended in 2017 and that he no longer held Sunrun's home improvement contractor license, he would not have been hit with charges, which were dismissed in May 2024. The case, assigned to U.S. District Judge Jeffrey A. Meyer, is 3:24-cv-01423, Steins v. Sunrun, Inc. et al.
Who Got The Work
Greenberg Traurig shareholder Joshua L. Raskin has entered an appearance for boohoo.com UK Ltd. in a pending patent infringement lawsuit. The suit, filed Sept. 3 in Texas Eastern District Court by Rozier Hardt McDonough on behalf of Alto Dynamics, asserts five patents related to an online shopping platform. The case, assigned to U.S. District Judge Rodney Gilstrap, is 2:24-cv-00719, Alto Dynamics, LLC v. boohoo.com UK Limited.
Featured Firms
Law Offices of Gary Martin Hays & Associates, P.C.
(470) 294-1674
Law Offices of Mark E. Salomone
(857) 444-6468
Smith & Hassler
(713) 739-1250
