Dawn Ellmore Employment’s Luke Rehbein on the LinkedIn story shared by the World Trademark Review

In a case that could change trade mark precedent in the US, the United States Patent and Trademark Office (USPTO) v Booking.com is heading for the Supreme Court.

The case centres on whether Booking.com is too generic to be granted federal trade mark protection. It’s not the first time this issue has come up in the US trade mark sector, with various other domain names not making the cut. So why is this case going all the way to the Supreme Court?

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Supreme Court agree to hear the case in spring 2020

The Supreme Court decided on 8 November 2019 that it would hear the federal bid to stop Booking.com retaining its domain name trade mark. A subsidiary of Booking Holdings Inc, Booking.com is an accommodation and transport reservation business that operates solely online.

An appeal was lodged by the USPTO to the Supreme Court on the basis that the name ‘Booking.com’ is too generic to be trade marked. A lesser court ruled in the year that the company could have the trade mark because by adding ‘.com’ onto ‘booking’, the name can no longer be considered generic. Therefore, the lower court decided that the company could receive federal trade mark protection.

Based in Amsterdam, Booking.com started using the domain name globally as its brand in 2006. The company went on to file trade mark applications in 2011 and 2012, which were rejected by a USPTO tribunal in 2016.

The federal agency’s decision said that ‘Booking.com’ related to a generic action – that of booking accommodation or transport online. Therefore, it can’t be considered as exclusive. US law says that only brands and wording that can reasonably be linked with a specific product or service can register for a trade mark. As the federal courts have rejected other submissions from similar sites, the USPTO argues that they should reject this. Other domain names that have been rejected for trade mark protection include hotels.com, lawyers.com and mattress.com.

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Booking.com say consumers recognise its brand

Booking.com launched its official appeal saying that they could prove customers link the brand with its function. Using a survey that showed more than 70% of consumers instantly recognise Booking.com as a brand, the company asked the 4th US Circuit Court of Appeals to reconsider.

In February 2019, the 4th Circuit Court, which is based in Virginia, sided with the company. It judged that Booking.com is known by consumers as a business and not just the generic action of booking a holiday or transportation.

The USPTO is forcing it to the Supreme Court and insisting that the addition of .com to a generic word can’t be considered distinctive enough to be trade marked. While the federal agency asks the Supreme Court to quash the Circuit Court’s ruling, the company asks them to retain the judgement. Booking.com says in court papers that it is “one of the best-known travel and accommodation services in the country.”

The outcome of the Supreme Court judgement could have far-reaching connotations for other businesses. The issue of whether trade mark protection should be granted to words that could be considered ‘generic’ is a major point of contention.

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Why does federal trade mark protection matter?

Businesses and brands that are granted a federal trade mark have extra protection on top of whatever state law gives them. The trade mark also allows them exclusive rights in any part of the country where the brand isn’t already used. This means the trade mark owner can sue competitors for breaching the mark, or put them on notice about using it.

And it’s this power that the USPTO objects to. The US Solicitor General, in court papers, says to the Supreme Court that the ruling by the 4th US Circuit “threatens to cause serious and immediate anticompetitive harms.” In other words, it gives Booking.com an unfair legal advantage over competitors.

The company responds that customers clearly link Booking.com with its function. That is, as an online accommodation reservation website that is trustworthy and secure. Booking.com says that any rejection of federal trade mark registration will open the floodgates to other companies to mislead consumers. In court papers, a Booking.com representative says: “Denying registration will only allow unscrupulous competitors to prey on its millions of loyal consumers by falsely advertising as ‘Booking.com’.”

The USPTO contends that should Booking.com retain the registration, they could use it to pursue unfair litigation. It argues that the company cold sue competitors who are using similar domain names, such as roomsbooking.com or hotelbooking.com. The Supreme Court will hear the case in spring 2020 and deliver its final ruling by the end of June 2020.