Supreme Court Affirms Validity of ‘Booking.com’ Trademark

Source: Bloomberg Law Journal

In its first case to ever be conducted as a remote oral argument, the Supreme Court ruled that a generic word combined with “.com” can be used to create a federally protected trademark. The court centered around Booking.com, a company that the Patent and Trademark Office denied due to the generic nature of its title. 

The decision passed 8-1, with Justice Styer providing the only dissenting opinion. The justices stated that while “Booking” is a generic term, the addition of “.com” makes it not generic to the public, as it is recognized as its own company/service. Justice Ginsberg wrote, “Because ‘Booking.com’ is not a generic name to consumers, it is not generic,” indicating that consumers do not see other travel companies like Travelocity as a “Booking.com” service.

The Patent and Trademark Office argued a precedent that corporation titles with “Company” or “Inc.” cannot serve as a trademark, but the court responded that unlike the cases with these terms, only one party can hold a website domain.

Consumers are excited about the decision, as companies such as Hotels.com and Wine.com are now deserving of trademark recognition, while many attorneys say that the decision establishes a precedent that welcomes future litigation. Trademark attorney J. Kevin Fee of Morgan, Lewis & Bockius LLP agreed, saying “Whenever the court rejects ‘per se’ rules and adopts fact-dependent analysis, it always invites litigation.

The decision indicates future consideration of the “primary significance” of a title versus a class of goods and services, extending trademark rights to companies with generic names accompanied by a “.com” domain.

Do you have questions about trademarks and copyright or the impact this ruling will have on other legal matters? Call us today at (718) 554-6445!