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U.S. Supreme Court Overturns USPTO Trade Mark Refusal Against Booking.com

Booking.com is an Amsterdam based digital travel company that provides online hotel and travel reservation services. It also maintains the same domain name for its website.

About a decade ago, Booking.com filed trademark applications for four marks, each with distinct designs but all containing the term “Booking.com”. Unfortunately, the USPTO Examination Attorney refused the applications alleging that “Booking.com” is too generic especially for travel reservation services. The Trademark Trial and Appeal Board affirmed the Examining Attorney’s findings.

Booking.com did not relent and appealed for a U.S. District Court review that allowed the introduction of new evidence. Among the evidence presented was an analysis of consumer perception of the Booking.com mark. This time, the district court decided in favour of the company and held that “Booking.com” is not generic. The word “booking” is but not “Booking.com”.

Rather than being generic, the term was deemed descriptive. The district court found that “the consuming public primarily understands that Booking.com does not refer to a genus, rather it is descriptive of services involving ‘booking’ available at that domain name.” The district court also held that the term has “acquired secondary meaning as to hotel-reservation services”. This decision was affirmed by the Court of Appeals after the USPTO appealed to overturn the district court decision. The case was elevated to the U.S. Supreme Court after the USPTO filed a petition for the high court to assess “whether there is a nearly per se rule against trademark protection for a ‘generic.com’ term.”

In a climactic finish, the U.S. Supreme Court issued its highly awaited trademark decision. In the United States Patent and Trademark Office v Booking.com B.V. No. 19-46 (S. Ct. June 30, 2020), the Supreme Court issued the 8-1 decision finding that whether a “GENERIC.COM” mark qualifies for trademark protection depends on its ability to act as a source identifier to consumers. The court held that a “GENERIC.COM” mark may or may not actually be generic. Adding “.COM” to an otherwise generic and unregistrable mark does not automatically mean the mark is disqualified for trademark protection or that “.com” yields a generic composite. A term styled “GENERIC.COM” is a generic name for a class of goods or services only if the term has that meaning to consumers.

The U.S. Supreme Court’s was just handed down on 30 June of 2020 and its impact cannot be underestimated. It will now serve as a precedent that is crucial for any trade mark application that combines a generic term (a term commonly used for a class of goods or services) with another generic term (e.g. booking plus .com). This type of application will no longer necessarily result in an automatic refusal on account of being an unregistrable generic composite mark.

Jennifer Lynn Junio, BA Comm, MA CAR

Contact W3IP Law on 1300 776 614 or 0451 951 528 for more information about any of our services or get in touch at law@w3iplaw.com.
Disclaimer. The material in this post represents general information only and should not be taken to be legal advice.

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