In June 2020, the Supreme Court ruled that Booking.com is eligible for a trademark, and therefore protection against other entities using the name to sell similar goods or services. This decision contradicts the USPTO’s opinion that a generic term such as “booking” amended with “.com” remains generic.
The Supreme Court, as well as the District Court and appellate court before it, “determined that ‘Booking.com’—unlike the term ‘booking’ standing alone—is not generic.” The decision was supported by the idea that “[b]ecause domain names are one of a kind, a significant portion of the public will always understand a generic ‘.com’ term to refer to a specific business…” This singularity is what sets ‘generic.com’ trademark requests apart from those that attempt to protect a name that simply pairs a generic term with a word such as “company” or “incorporated.”
To reinforce the notion that a domain name can help consumers identify a specific business, Booking.com presented survey results showing that almost 75% of relevant consumers recognize “booking.com” as a brand, rather than a generic term.
What can we learn from USPTO et al. v. Booking.com B.V.?
1. Not all trademarks are created equal.
On the USPTO’s continuum of distinctiveness, descriptive devices (like Booking.com) are least protected by a trademark. Booking.com acknowledges this but opted to continue pursuing a trademark for specific offline protection.
2. Ecommerce companies should consider protection.
Companies with a strong digital presence, including ecommerce companies, should consider trademark protection. Doing so will allow you protection both online and offline. Booking.com pursued a trademark “to prevent competitors from opening storefront Booking.com travel agencies, or from diluting its brand by selling Booking.com-themed travel products in airport shops.”
3. Consider cost before attempting to trademark.
Booking.com endured three federal court cases, after seven attempts to register its name with the USPTO. The courts’ decision was built on a survey funded by the company. The cost of these hurdles may be worth it for a brand as well-known as Booking.com. However, other organizations, without similar brand awareness and market research, may not fare as well.