The travel reservation company Booking.com, a unit of Booking Holdings Inc, deserves to be able to trademark its name, the U.S. Supreme Court decided on Tuesday, overruling a federal agency that found it too generic to merit protection. The court decided 8-1 that the U.S. Patent and Trademark Office was incorrect when it denied the company’s application to trademark the name Booking.com, with the justices finding it distinctive enough that the agency should have approved it.
The court said surveys made clear that consumers understand that Booking.com refers to a particular company, and not online hotel reservation services in general.
“Because ‘Booking.com’ is not a generic name to consumers, it is not generic,” liberal Justice Ruth Bader Ginsburg wrote in the ruling.
In a dissent, liberal Justice Stephen Breyer said the court’s majority had put too much emphasis on consumer surveys, which he said were of limited value.
Booking.com, based in Amsterdam, welcomed the ruling, with spokeswoman Kimberly Soward saying in a statement that it “demonstrates that the U.S. legal system has the capacity to evolve in order to reflect the digital world we are all living in.”
David Bernstein, a lawyer for Booking.com, called the decision “a victory for countless brand owners that have invested significant resources in building their brands - such as Weather.com, Law.com, Wine.com and Hotels.com.”
U.S. Patent and Trademark Office spokesman Paul Fucito declined to comment.
U.S. law allows trademark registrations only on terms that are “descriptive,” or able to distinguish a particular product or service from others on the market. “Generic” words that refer to an entire category of goods or services, like “car” or “computer,” cannot be protected under the law because that would give an unfair competitive advantage to the trademark holder. Booking.com began using its name globally in 2006, and filed U.S. trademark applications in 2011 and 2012. A U.S. Patent and Trademark Office tribunal rejected those applications in 2016, saying “booking” is a generic term for a category of services and that the addition of “.com” did not transform it into a protected trademark. Lower courts sided with Booking.com, prompting the patent office’s Supreme Court appeal. Tuesday’s ruling may guide how some other companies, such as Salesforce.com Inc and Home Depot Inc, protect their brands from potential copycats.
The May 4 oral argument in the case was the first that the justices held by teleconference amid the coronavirus pandemic. In another first, the public was able to hear arguments through a live audio feed.