United States Patent and Trademark Office v. Booking.com B.V.
Issues
Does the addition of a generic top-level domain name such as “.com” to a generic term such as “booking” create a protectable trademark, notwithstanding the Lanham Act’s prohibition on registering generic terms as trademarks?
This case asks the Supreme Court to determine whether the addition of a domain suffix such as “.com” to a generic term like “booking” can create a protectable trademark. The Petitioners, United States Patent and Trademark Office and the Department of Justice, contend that the Court’s decision in Goodyear that the addition of a corporate designation such as “Company” or “Inc.” to a generic word does not render the combination protectable, extends to adding a “.com” suffix. The Respondent, Booking.com, counters that the Lanham Act repudiated Goodyear, and advocates for the application of the “primary significance” test which focuses the genericness inquiry on whether the consuming public views the term as signifying the producer rather than the product. The Court’s decision will have implications for online companies that have invested resources in developing their brand recognition using generic terms.
Questions as Framed for the Court by the Parties
Whether the addition by an online business of a generic top-level domain (“.com”) to an otherwise generic term can create a protectable trademark.
Booking.com manages a website where customers can make travel and lodging reservations. Booking.com B.V. v. USPTO at 5. In 2011 and 2012, Booking.com filed four trademark applications with the U.S. Patent and Trademark Office (“USPTO”) for the use of BOOKING.COM. Id. For trademarks to be protected they have to be distinctive. Id. at 3.
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Additional Resources
- Erica B. E. Rogers: Dot-Com Hits the Supreme Court, The National Law Review (Nov 13, 2019).
- Alexis Kramer: Booking.com Isn’t a Valid Trademark, Patent Office Tells Justices, Bloomberg Law (Aug 22, 2019).