Supreme Court backs Booking.com in TM saga

The US Supreme Court has ruled that adding ‘.com’ to otherwise generic terms can create a protectable federal trademark, in a win for  Booking.com.

The  highly anticipated decision, issued today, June 30, marks a defeat for the US Patent and Trademark Office (USPTO), which has long maintained that such marks are not eligible for trademark protection.

Booking.com challenged that stance after being refused registration of a mark for the name of the company, and was successful before the US Court of Appeals for the Fourth Circuit.

After the USPTO petitioned for certiorari, Supreme Court justices heard arguments from both sides  via teleconference for the first time in its history in April.

Lawyers told WIPR at the time that the Supreme Court appeared to be concerned about granting Booking.com a  monopoly over such broad terms.

But the justices were also balancing those concerns with fears over implementing a categorical or ‘per se’ ban on such marks, as effectively requested by the USPTO.

In the end, the justices’ distaste for granting categorical rules, “regardless of specific evidence of consumer perception,” won out.

In an 8-1 majority decision delivered by Justice Ruth Bader Ginsburg, the court found that the USPTO’s rule had “no basis” in US trademark law.

According to Ginsburg, the USPTO did not do enough to convince the majority to adopt a categorical ban on so-called “generic.com” marks.

Ginsburg wrote that the USPTO was relying on the “faulty” premise that the combination of a generic term like Booking with ‘.com’ was itself necessarily generic.

“A ‘generic.com’ term might also convey to consumers a source-identifying characteristic: an association with a particular website,” Ginsburg wrote.

According to the majority, ‘generic.com’ terms could become distinctive enough so as to function properly as a trademark.

This was entirely dependent on how consumers perceived the mark, she said.

Justice Stephen Breyer, writing as a lone dissenter, said the court ought to have adopted the USPTO’s proposed rule against ‘generic.com’ marks.

According to Breyer, Booking.com’s name “informs the consumer of the basic nature of its business and nothing more”.

Booking.com had attracted the support of the International Trademark Association, as well as  domain traders’ groups, who filed amicus briefs in support of the company’s position.

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