Supreme Court Rules, 8-1, Booking.com Is Trademark-Eligible

Booking.com is eligible for federal trademark protection, the Supreme Court ruled 8-1 Tuesday. The high court overruled the Patent and Trademark Office’s finding that the domain name is a generic term (see 2005040050). Justice Stephen Breyer dissented, saying the term Booking does nothing more than identify a generic product or service. PTO had refused Booking.com’s registration, saying the combination of a generic word like booking with .com doesn’t make it any less of a generic term for online hotel reservation services.

Such a domain is a generic name for a “class of goods or services only if the term has that meaning to consumers,” Justice Ruth Bader Ginsburg wrote for the majority. According to lower court decisions uncontested by PTO, consumers don’t see Booking.com as a term signifying generic online hotel reservation services, she continued: “In circumstances like those this case presents, a ‘generic.com’ term is not generic and can be eligible for federal trademark registration.” PTO declined comment.

“The company’s name informs the consumer of the basic nature of its business and nothing more,” Breyer dissented. “Therein lies the root of my disagreement with the majority.” This decision is “inconsistent with trademark principles and sound trademark policy,” he said.

Justice Sonia Sotomayor agreed with the majority, concurring that there isn’t a “nearly per se rule against trademark protection for a ‘generic.com’ term,” which was at question before the court. PTO’s past practice reflects there’s no comprehensive rule that every “generic.com” term is generic “absent exceptional circumstances,” Ginsburg wrote. She cited trademarks for Art.com and Dating.com, which would be at risk if PTO had prevailed: “We decline to adopt a rule essentially excluding registration of ‘generic.com’ marks.” The patent office and Breyer’s dissent both acknowledge “only one entity can occupy a particular Internet domain name at a time,” so consumers understand the distinction, she wrote.

Breyer “wisely” noted that consumer surveys might not be a reliable indicator of “genericness,” Sotomayor said. But “dictionaries, usage by consumers and competitors” and other sources relevant to consumer perception “may also inform whether a mark is generic or descriptive,” she said.

The court rightly confirmed Booking.com as a brand name, emailed Debevoise & Plimpton's David Bernstein, who filed Booking.com’s briefing as co-counsel. The court affirmed that if “consumers perceive a term to be a brand name and not merely a generic or descriptive reference, then that name is entitled to trademark protection,” he wrote. He said the court rightly acknowledged a ruling against Booking would have threatened other brand owners like Weather.com, Law.com, Wine.com, Hotels.com, Home Depot, Salesforce, TV Guide, Pizza Hut and The Container Store.

The decision provided “important certainty to marketers and practitioners by rejecting a near per se rule,” emailed Loeb & Loeb Retail/Consumer brands lawyer Daniel Frohling. He welcomed affirmation that “each mark’s primary significance to the relevant public determines whether or not it is generic.”

The case was argued in May during the Supreme Court’s first virtual oral argument. At least four justices questioned why Booking.com can’t trademark its domain. Four others raised concerns about enabling monopoly power by granting such trademarks, which might preclude rivals like ebooking.com from using "booking" in marketing materials. The Electronic Frontier Foundation supported the PTO, and the American Intellectual Property Law Association disagreed with some of the office’s arguments. Those groups didn’t comment now.