Written By: Cara O’Hanlon
Edited By: Zara Watson, Esq.
The Supreme Court ruled on Tuesday that online travel agency, Booking.com, can trademark its name. The United States Patent and Trademark Office initially denied Booking.com’s request to register its name as a trademark, arguing that the use of generic terms in business names is not eligible for federal trademark protection. However, in an 8-1 ruling, the court asserted that the combination of a generic term and a generic domain such as “.com” can now be trademarked. In the court’s opinion, Justice Ruth Bader Ginsburg writes, “if ‘Booking.com’ were generic, we might expect consumers to understand Travelocity – another such service – to be a ‘Booking.com… We might similarly expect that a consumer, searching for a trusted source of online hotel reservation services, could ask a frequent traveler to name her favorite ‘Booking.com’ provider” however, “consumers do not in fact perceive the term ‘Booking.com’ that way”.
Booking.com’s lawyers cited the results of a survey reporting that 74.8% of consumers see “Booking.com” as a brand rather than a generic name. Ginsburg argues that Booking.com is not a generic name because it is not generic to the public, which “should resolve this case.” The court also asserted that the nature of domain names indicates that marks such as Booking.com are not generic. As only one individual can use a certain domain name, consumers can recognize that ‘generic.com’ marks refer to a particular company, even if the term alone is considered generic. This discredits the Patent and Trademark Office’s stance that ‘generic.com’ terms refer to a general class of goods or services, such as travel bookings.
The registration of ‘generic.com’ trademarks makes domains such as “Booking.com” even more valuable. Companies seek these domains because they are easy to remember and contain common words used by consumers to find certain online goods or services. Businesses that are able to obtain the rights to a generic name will now be able to more effectively protect these domain names by registering them as trademarks. During the trial, lawyers for Booking.com expressed that the company needed trademark protection over their name to prevent competitors from weakening its brand by starting travel agencies or selling travel products under the name Booking.com. This ruling provides Booking.com with the competitive advantage to prevent others from using similar marks to sell their products or services, as well as enforcement rights to an extremely beneficial name and domain.
Your trademark is your company’s most valuable asset. With our help, protect your own brand so you can have peace of mind knowing that no one else can use your mark. Click here to schedule your free call with Attorney Zara Watson today!
*** This is for informational purposes only, no attorney-client privilege has been formed.