Supreme Court Sides With Booking.com Ruling .Com Can Distinguish a Generic Term

Supreme Court Settles Long Battle for Booking.Com Trademark

In a closely watched trademark case, the Supreme Court has decided in favor of the Booking.com trademark, which means that some companies may now trademark otherwise generic terms with the “.com” domain identifier, if they have become source identifiers, without fear of outright rejection from the U.S. Trademark Office.  

The History of Booking.com’s Trademark Battle

The Booking.com case began back in 2011 when Booking.com filed trademark applications to register the BOOKING.COM trademark.  The U.S. Trademark Office had denied the applications, stating that “booking” was a generic term and that including “.com” into the mark did not allow it to qualify as a bona fide mark under trademark law.  At the lower court levels, however, federal courts found for Booking.com, resulting in repeated appeals all the way up to the Supreme Court.    

However, in a landmark decision, the Supreme Court ruled, 8 to 1, that adding “.com” to an otherwise generic term may make that combination eligible for federal trademark protection.  This is a clear departure from the U.S. Trademark Office’s stance that merely adding “.com” does not make an otherwise generic term eligible for the trademark register.  

Arguments For and Against the Booking.com Trademark Being Generic

Arguing against allowing the registration of Booking.com, trademark attorneys for the U.S. Trademark Office attempted to persuade the High Court that marks that consist of generic terms such as “booking” coupled with the addition of “.com” can not be registered because the mark should still be considered generic.  And as such, allowing the registration of such a generic mark would harm other companies looking to use the term “booking” in business.  This has long been the U.S. Trademark Office’s stance, and understandably, the U.S. Trademark Office further argued that even if such generic marks have taken on a secondary meaning, they still should not be allowed to register as protectable trademarks.   

By contrast, the attorneys for Booking.com successfully argued that, in this day and age, brands needed to be able to register such marks for legitimate reasons.  For example, it is wholly possible that some brands that operate solely online are uniquely recognizable to consumers if the “.com” is included, thereby distinguishing the source and brand from the plain generic term.  As such, these brands meet the intent of trademark law, which is to protect consumers by allowing the registration of marks that effectively denote the source of goods or services. 

Supreme Court Finds Use of .COM Can Add Distinctiveness  

In their opinion, the majority of the Supreme Court stated that because consumers could come to recognize these marks as representing specific sources of goods or services, such marks could not be considered generic.   

While the decision in favor of the Booking.com trademark will undoubtedly open the floodgates for new applications to be filed that may have been previously rejected as generic, it remains to be seen where the exact cutoff for what is generic and what is not when it comes to the inclusion of “.com” in a mark.  For example, will an application for HOTELBOOKING.COM be allowed, or would that mark be deemed to cause a likelihood of confusion due to the successful registration of BOOKING.COM?   

In an interesting aside, this case marked the first time that the Supreme Court heard arguments via teleconference with a bonus of the public being allowed to hear the arguments live through audio feed.

Key Takeaways on the Supreme Court Ruling for the BOOKING.COM Trademark

The Supreme Court has ruled that marks that were previously considered to be generic on their own may be eligible for trademark registration when they include “.com” in the proposed mark.  This decision is likely to:

  • lead to a surge in trademark applications that will now include “.com” that were previously denied;

  • potentially lead to applications being filed by domain-squatters; 

  • raise new questions of trademark infringement as websites that may use these newly-protected terms may already exist; and

  • possibly cause problems for new marks that may need to incorporate these protected terms in their own future applications.

For more insights on Trademark Litigation, see our Intellectual Property Litigation Overview and eCommerce Industry Legal Solutions pages.

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