Supreme Court Holds BOOKING.com Protected

James E. Hudson III, Crain Caton & James P.C.

In an 8-1 opinion, the Supreme Court held that indicators of source which incorporate a generic term are protectable where the resulting mark is not perceived as a generic term by the consuming public.[1]  In United States Patent and Trademark Office v. Booking.com B.V., the Court held the BOOKING.COM mark was protectable under the Trademark Act of 1946.[2]  This overrules prior appellate court opinions which rejected attempts to obtain registration of HOTELS.COM[3] and LAWYERS.COM.[4]  

The Supreme Court held that the combination of a generic term with a domain created a single source “for only one entity can occupy a particular Internet domain name at a time, so a “generic.com” term could convey to consumers an association with a particular website.”[5]  The Supreme Court rejected the US Patent & Trademark Office’s bright-line test that adding “.com” to a generic term does not result in a distinctive, source-identifying mark, asserting that because of the internet domain’s function as an address, only one entity can occupy a particular Internet domain at a time, a “generic.com” term could convey to consumers an associated with a particular website.[6]

To be seen is whether this ruling opens the floodgates of generic.com (and other TLDs) websites, a concern that Justice Breyer enunciated in his dissent.[7]  Breyer fears the flood of generic marks and at least the threat of litigation to chill registrations of other generic variants. [8]

With protection available when the generic.com mark is held distinctive based on public perception, one issue will be a likelihood of confusion analysis between businesses which have adopted trademarks which differ only as to the TLD, such as booking.com and booking.info. 

Still, businesses are best served by choosing a unique identifier which is not generic or even partially descriptive in view of the associated goods and/or services and promptly seeking protection, including the filing of Intent to Use applications where interstate sales are envisioned.

[1] United States Patent and Trademark Office v. Booking.com B.V., No. 19-46 (S.Ct. June 30, 2020), available at https://www.supremecourt.gov/opinions/19pdf/19-46_8n59.pdf at 11.

[2] Id. at 14.

[3] In re Hotels.Com, L.P., 573 F.3d 1300 (Fed.Cir. 2009)(“We conclude that the Board satisfied its evidentiary burden, by demonstrating that the separate terms “hotel” and “.com” in combination have a meaning identical to the common meaning of the separate components. The Board’s finding that HOTELS.COM is generic was supported by substantial evidence. The refusal of the registration is AFFIRMED”)

[4] In re Reed Elseivier Properties, Inc., 482 F.3d 1376 (Fed.Cir. 2007)(affirming rejection of mark as generic)

[5] Booking.com B.V. at 9.

[6] Id.

[7] Booking.com B.V. (dissent at 10-12)

[8] Booking.com B.V. (dissent at 10-12)

James E. Hudson III | Intellectual Property Commercial LitigationAbout the Author:

James E. Hudson III is an intellectual property lawyer, with emphases on mechanical technology and trademarks.  Jim has extensive experience in securing and protecting technology and trademark rights before federal and state offices and courts and is registered Patent Attorney.  Jim has protected client’s rights in patents, trade secrets and trademarks and the right to bring goods and services to market before trial and appellate courts across Texas and the nation.  Jim may be contacted on 713.752.8652 or [email protected].