It’s rare that the Supreme Court issues a trademark or patent decision. Thus, today’s email.
On Tuesday, the high court issued an 8-1 ruling that sided with the online travel agency Booking.com, allowing it to trademark its name.
The decision will have a ripple effect for other companies with names using a generic word followed by “.com.” Businesses like Cars.com, Newspapers.com, Dictionary.com, and Wine.com can ride on the coattails of Booking.com’s win.
The Supreme Court found the name, Booking.com, distinctive enough to overrule the U.S. Patent and Trademark Office (USPTO) decision that found the name too generic to merit protection.
Justice Ruth Bader Ginsberg wrote for the majority: “Because ‘Booking.com’ is not a generic name to consumers, it is not generic.”
The victory was a long time coming for Booking.com, which filed trademark applications in 2011 and 2012. The USPTO rejected the applications in 2016, arguing that “booking” is a generic term for a category of services and adding “.com” did not transform it into a protected trademark.
U.S. law approves trademark registrations for terms that are “descriptive,” and distinguish a particular product or service from others on the market. The USPTO’s argument — “generic” words (such as “Cars.com”) would create an unfair competitive advantage and possible monopoly.
Lower courts sided with Booking.com, prompting the appeal to the Supreme Court. The ruling bodes well for digital brand owners like Weather.com and Law.com to protect their businesses against potential copycats.
Of note, the case of United States Patent and Trademark Office v. Booking.com also made history as the first oral argument the justices held by teleconference amid the coronavirus pandemic.
To learn how Ference and Associates can help you with your trademark registration please call 412-741-8400.