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Booking.com US Trade Mark Case

5 August 2020

United States Patent And Trademark Office, Et Al, Petitioners v Booking.Com B.V.

The world's leading digital travel company Booking.com has recently won a key legal trade mark case where the Court found "booking.com" was not a 'generic term' and could be a registered trade mark. The Booking.com case was the Supreme Court's first oral argument ever conducted via telephone, due to the coronavirus pandemic. With over 28 million website listings, it was important for the successful company to obtain trade mark protection.

The United States Patent and Trademark Office (USPTO) rejected the trade mark application for booking.com arguing that 'booking.com' is a generic term and could not be a registered trade mark. The USPTO's "per se" rule is when you combine a generic term like "booking" with ".com" it produces a generic composite which is not protectable as a trade mark. The legal issue for the US Supreme Court to consider was whether booking.com is protectable as a trade mark in the United States.

The majority of the Court (in an 8-1 decision) rejected the USPTO's claim that the combination of a generic word and ".com" is generic. The Supreme Court found that booking.com is not perceived by its consumers to be a generic name and therefore it is capable of protection. The Court provided an analysis on what makes a trade mark eligible for registration. 

Among the conditions for registration, the mark must be one "by which the goods of the applicant may be distinguished from the goods of others". The USPTO's own past practice appears to reflect the decision in that generic terms with the addition of ".com" are capable of registration. The Court cited "ART.COM" and "DATING.COM" as prime examples that fall into this category.

In rejecting the USPTO's argument, the Court reiterated that owners of generic marks do not have monopoly over the generic terms. This is what is known in the US as the fair use doctrine which protects anyone who uses a descriptive term "fairly and in good faith" to describe their own goods.

In contrast, Justice Stephen Breyer wrote in dissent that he fears the decision will lead to a "proliferation of 'generic.com' marks, granting their owners a monopoly over a zone of useful, easy-to-remember domains". Further, that many businesses could obtain a trade mark by simply adding ".com" to the name of their generic product (pizza.com or flowers.com).

In Australia, the courts have adopted a similar approach in assessing domain name trade marks. In the case REA Group Ltd v Real Estate 1 Ltd, the owner of realestate.com.au and the corresponding trade mark successfully claimed that realestate1.com.au infringed REA Group's trade mark. The Court held the terms "www" and ".com.au" can form part of a distinct trade mark where it incorporates the accoutrements of a domain name as cues to a product of brand's identity. IP Australia has adopted this reasoning and has accepted a number of "generic.com" marks as part of the trade mark register. 

Managing your trade mark helps you maximise commercial benefits for your business and ensures your trade mark is protected. This includes making sure your trade mark is renewed and making the required changes to your registration. If you require any assistance with respect to trade marking, please do not hesitate to contact our office.

Ellen Baker