Booking.TM: US Supreme Court to hear Booking.com trademark case

December 6, 2019

2 min read

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What's going on here?

The US Supreme Court is considering blocking an attempt to trademark Booking.com, on the basis that it is “too generic” to attract legal protection.

What does this mean?

Booking.com was founded in 1996 in Amsterdam and has since grown from a small start-up to one of the world’s leading online travel agencies. The US Supreme Court is set to hear an appeal from the US Patent and Trademark Office (USPTO) to overturn a decision that allowed the generic word “booking” to be trademarked by turning it into a domain (i.e. by adding “.com”).

What's the big picture effect?

Booking.com applied to register their name as a trademark as early as 2011. In 2016, these applications were rejected by a tribunal of the USPTO, on the grounds that “Booking.com” was too generic. Under US law, only those products or services that are described using distinguishing terms can be trademarked; previously, applications to trademark hotels.com and lawyers.com have been rejected. After two years, the Court of Appeal has allowed their appeal, on the grounds that the public understands the name refers to a specific business

In October, the USPTO appealed to the Supreme Court to overturn this decision. The Supreme Court scheduled a hearing for Spring 2020, and the final ruling is expected by June. 

If Booking.com is unsuccessful, it can continue to use its moniker but it will lack vital legal protection. Trademarking provides owners with the tools to prevent someone else using similar signs and riding off the back of their reputation. It makes sense for Booking.com to seek legal recognition of their brand given the time and money they have committed to establishing it. That said, the main concern of the USPTO is that trademarking Booking.com could lead to anticompetitive consequences.

In the event of a positive verdict from the Supreme Court, commentators anticipate a surge of applications concerning other generic domain names. For this reason, the Court may approve the registration but construe this narrowly to confer minimal legal protection. Nonetheless, the outcome of this case will have very interesting repercussions.

Report written by Sarina Johal

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