The legal battle between Booking.com BV and the U.S. Patent and Trademark Office (USPTO) began more than five years ago and concerns whether the online hotel booking company can secure a trademark registration for its name. After filing for trademark protection, Booking.com commenced a federal lawsuit in connection with the USPTO’s refusal to issue a trademark on the grounds that “BOOKING.COM” was too generic. Thereafter, the U.S. District Court for the Eastern District of Virginia held that the company’s “BOOKING.COM” trademarks could be registrable as descriptive trademarks that have acquired distinctiveness. The district court reasoned that the trademark “BOOKING.COM” had the potential to be non-generic when the public understood the trademark in its totality to refer to Booking.com’s brand. Significantly, the district court reviewed Booking.com’s survey evidence to conclude that the consuming public did not associate “BOOKING.COM” with general online hotel booking services. Rather, the district court noted that survey evidence indicated that participants associated the trademark, which included the top-level domain “.COM” with the specific source of the services.
The U.S. Court of Appeals for the Fourth Circuit affirmed the lower court’s ruling on this issue. The appellate court wrote that “when [“.COM”] is combined with [a second term], even a generic [second term], the resulting composite may be non-generic where evidence demonstrates that the mark’s primary significance to the public as a whole is the source, not the product.”
The USPTO petitioned the U.S. Supreme Court to reverse the Fourth Circuit’s affirmance that “BOOKING.COM” can be a valid mark because customers may identify the combined term as a brand name. Namely, the USPTO claimed that the Fourth Circuit’s decision conflicted with earlier Courts of Appeals decisions, which held that the addition of a descriptive component alone to a generic term does not transform the generic term into a registrable trademark. In November 2019, the Supreme Court granted certiorari on the issue presented and will soon decide whether adding a top-level domain such as “.COM” to a generic name can transform the resulting combination into a federally protectable trademark. Continue Reading