5 May 2020Trademarks

SCOTUS weighs monopoly fears in Booking.com

The US Supreme Court appears to be fearful of applying a categorical rule in a dispute over whether a ‘.com’ can turn a generic term like ‘Booking’ into a protectable trademark, lawyers have told WIPR.

Counsel for both  Booking.com and the US Patent and Trademark Office (USPTO) faced questions from the Supreme Court justices  over teleconference yesterday, May 4—the first time a remote hearing has been conducted at the country’s top court.

The case is expected to resolve whether a combination of otherwise unprotectable, generic terms like ‘Booking’ and ‘.com’ can be registered as a trademark.

The USPTO wants the court to issue a categorical or ‘per se’ rule that adding a  generic top-level domain (gTLD) like ‘.com’ to another generic term does not qualify for trademark protection.

“It’s difficult to read how the court will decide,” said Eric Moran, partner at McDonnell Boehnen Hulbert & Berghoff.

“The Justices seemed particularly concerned about creating an area of exclusivity over other internet addresses that are confusingly similar to the .com at issue like ebooking.com and hotelbooking.com,” Moran explained.

Jennifer Lee Taylor, chair of law firm Morrison & Foerster’s trademark group, agreed that fears of granting Booking.com “monopolistic powers” in the market was likely to influence the judges’ decision.

“They clearly understood that by owning the .com top-level domain name Booking.com already has a significant advantage in the market, and seemed to struggle to understand why it needed to have a registration as well, particularly when it is already protected under the unfair competition laws,” Lee Taylor said.

Justice Ginsburg questioned lawyers for Booking.com on why the company would need a trademark registration when its current rights were sufficient to prevent passing off. According to Booking.com, a federal trademark registration is required to enable it to benefit from protections against cyber-piracy originating from outside the US.

This jurisdictional advantage would be a significant weapon for generics-based domain name owners facing piracy problems,” said Brett Heavner, partner at Finnegan.

According to Heavner, the justices appeared to be leaning towards ruling in favour of Booking.com, “or at the very least, to reject a categorical or bright-line rule against generic.com marks”.

“Justice Kagan suggested that in place of a categorical rule, there should perhaps be a rule that meshes with the USPTO’s current examination guidelines indicating that generic terms plus gTLD endings would ‘typically’ not be protectable—leaving open the possibility of trademark protection when the domain name’s primary significance to the public is a trademark rather than a generic term,” Heavner said.

Did you enjoy reading this story?  Sign up to our free daily newsletters and get stories sent like this straight to your inbox.

Today's top stories

SCOTUS weighs monopoly fears in Booking.com dispute

USPTO launches COVID-19 patent platform

LESI publishes IP monetisation guides for SMEs

Already registered?

Login to your account

To request a FREE 2-week trial subscription, please signup.
NOTE - this can take up to 48hrs to be approved.

Two Weeks Free Trial

For multi-user price options, or to check if your company has an existing subscription that we can add you to for FREE, please email Adrian Tapping at atapping@newtonmedia.co.uk

More on this story

14 April 2020   The US Supreme Court is set to hear a series of oral arguments by telephone conference next month, including a dispute over ‘generic’ domains.
30 June 2020   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.
1 July 2020   The US Supreme Court’s decision in Booking.com is unlikely to lead to a “flood” of ‘generic.com’ trademarks, but concerns over the justices’ reasoning remain, lawyers have told WIPR.