When a trademark application involves generic terms, a question arises: when does a generic term become a distinctive mark that consumers immediately recognise and distinguish from other brands?
This is what makes the case of Booking.com interesting and important.
The company applied for trademark registration at the U.S. Patent and Trademark Office (USPTO) for the word ‘Booking.com’, which the USPTO rejected. The trademark argument created a legal battle that has reached the U.S. Supreme Court. The outcome of the case will have massive implications for applications using the ‘generic word’ + ‘.com’ formula. The repercussions may affect your business’s trade mark, too.
Timeline: How The Case Reached The Supreme Court
Booking.com is an online reservation service that began using the name in 2006. In 2016, the USPTO rejected Booking.com’s application for trademark registration. According to the federal agency, consumers use the word ‘Booking.com’ to refer to reserving lodgings and not the brand. The term is too generic to merit legal protection.
Booking.com challenged USPTO’s decision in court and won. In 2017, U.S. District Court Judge Leonie Brinkema in Alexandria, VA ruled that, despite being generic, using the word ‘booking’ with ‘.com’ entitled the company to a trademark.
District Court Of Appeals
The USPTO appealed to the U.S. Fourth Circuit Court of Appeals. The court, however, also ruled in favour of Booking.com in February 2019. According to the appellate judges, the USPTO couldn’t prove that consumers believe ‘Booking.com’ refers to hotel reservations.
U.S. Supreme Court
In July 2019, the federal agency appealed to the Supreme Court, asking the Court to consider whether adding a top-level domain—in this case, ‘.com’—to a generic term like ‘booking’ deserves trademark protection. In response, Booking.com cited a survey that showed 74.8 per cent of consumers recognise ‘Booking.com’ as a brand and not as a generic service.
The Court may announce its decision in a few months. For now, experts are divided on the matter.
The Case For Trademarking: Booking.com Is Distinctive
Booking.com maintains that ‘Booking.com’ has earned enough recognition from consumers to deserve a trademark.
Trademarks depend on consumers’ ability to distinguish one brand from another. And this, according to the company, has been sufficiently proven by their survey, which has also been cited by the lower court. Moreover, they stated that the USPTO’s decision would conflict with many other PTO-registered marks that follow the “generic.com” pattern, like Cooking.com and Weather.com.
The company also presented a second report from linguistics expert and Princeton professor, Dr Sarah-Jane Leslie. The report argued that even if “booking” and “.com” are generic terms on their own, combining them would not necessarily create a catch-all, generic term for reservation services.
The Case Against Trademarking: Booking.Com Is Generic
The USPTO maintains that such a trademark would enable a company to create a linguistic monopoly and prevent competitors from describing their services.
The Electronic Frontier Foundation (EFF) also filed an amicus brief, urging the Supreme Court to reject trademark protection for Booking.com. Granting trade mark registration, says EFF, could hurt competition and lead to many drawn-out court cases.
The organisation illustrates: if a trademark is granted, companies with similar domain names, like ‘ebooking.com’, may be flagged for ‘Likelihood of Confusion’ under trademark liability. These businesses could potentially face lawsuits.
Moreover, approving the trademark could open the floodgates for applications containing a combination of generic words and top-level domains, which, in turn, could lead to costly and lengthy court battles.
The Implications To Your Business
The outcome of the case could be a legal precedent for many trademark applications in the future. If Booking.com wins, the case would clarify the specific circumstances where a trade mark could be granted to a generic term + top-level domain. If not, then the case shows that Booking.com’s position is not enough to merit trade mark protection.
As more businesses build virtual stores, trademark issues involving generic terms with a top-level domain will become an inevitable part of the intellectual property landscape.
If your business encounters this problem, consult our trademark specialists, so we can look further into your case. We’ll review your application according to Australian trademark laws and provide the necessary support to increase the likelihood of approval.