United States Patent and Trademark Office, et al., v. Booking.com B.V.

Summarized by:

  • Court: U.S. Supreme Court Certiorari Granted
  • Area(s) of Law: Patents
  • Date Filed: November 8, 2019
  • Case #: 19-46
  • Judge(s)/Court Below: Court of Appeals for the Fourth Circuit, 915 F.3d 171 (2019)
  • Full Text Opinion

Whether the addition by an online business of a generic top-level domain (“.com”) to an otherwise generic term can create a protectable trademark.

Respondent, an online hotel booking company, applied to register trademarks containing the term BOOKING.COM. The application was denied by the Patent and Trademark Office because “booking” was generic for the services provided and the addition of “.com” did not create a protectable mark. The district court found that it was a potentially protectable mark subject to a showing of “acquired distinctiveness.” The court of appeals affirmed, concluding that the term, taken as a whole, would be understood as a brand and was thus not generic. Petitioner appeals to the Supreme Court, arguing that the holding of the court of appeals contravenes established trademark law and conflicts with the Federal and Ninth Circuits, which are the only other two courts of appeals that have considered whether such terms may be protected. Petitioner points to established principles of trademark law which maintain that adding “.com” to an otherwise generic term does not make the new term non-generic. Additionally, petitioner points to Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U.S. 598 (1888), in which the Court held that a corporation could not adopt generic name such as “Grain Company,” or “Cotton Company” because it would prevent others who have similar businesses from using similar names. In other words, it was too generic. Petitioner argues the same principle applies here as the term “booking” is generic for a type of service.

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