Term: 2019
Docket: 19-46
U.s. Patent And Trademark Office v. Booking.com B.v.
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19-46 PATENT AND TRADEMARK OFFICE V. BOOKING.COM B.V. DECISION BELOW: 915 F.3d 171 PRESS RELEASE OF MARCH 16, 2020 IN KEEPING WITH PUBLIC HEALTH PRECAUTIONS RECOMMENDED IN RESPONSE TO COVID-19, THE SUPREME COURT IS POSTPONING THE ORAL ARGUMENTS CURRENTLY SCHEDULED FOR THE MARCH SESSION. PRESS RELEASE OF APRIL 13, 2020 RESCHEDULED FOR ORAL ARGUMENTS BY TELEPHONE CONFERENCE. THE JUSTICES AND COUNSEL WILL ALL PARTICIPATE REMOTELY. CERT. GRANTED 11/8/2019 QUESTION PRESENTED: Under the Lanham Act, 15 U.S.C. 1051 et seq., generic terms may not be registered as trademarks. The question presented is as follows: Whether the addition by an online business of a generic top-level domain (".com") to an otherwise generic term can create a protectable trademark. LOWER COURT CASE NUMBER: 17-2458, 17-2459
In the case of U.S. Patent and Trademark Office v. Booking.com B.V., 2019, the Supreme Court ruled in favor of Booking.com, allowing trademark protection for a generic term when combined with ".com". The court held that because "Booking.com" is not a generic name to consumers but rather distinguishable as a specific business, it qualifies for federal trademark protection under the Lanham Act. This decision overturned the USPTO's previous refusal to register "Booking.com", arguing that it was too generic or descriptive. The ruling clarified that combining a general term with “.com” can create an eligible trademark if consumers recognize it as such.
In the dissenting opinion for U.S. PATENT AND TRADEMARK OFFICE v. BOOKING.COM B.V., Justice Stephen G. Breyer argued that adding ".com" to a generic term does not make it eligible for trademark protection under the Lanham Act, which prohibits registration of generic or merely descriptive terms unless they have acquired secondary meaning. He contended that "Booking.com" is no different from other combinations of domain names and generic terms like "washingmachine.com". The majority's decision, he warned, could lead to a proliferation of “generic.com” trademarks, potentially inhibiting competition by giving companies monopolistic control over common words in internet commerce. Furthermore, he disagreed with the reliance on consumer surveys as evidence of non-genericness due to their potential unreliability and susceptibility to manipulation.
