This week, the United States Supreme Court issued an important decision in U.S. Patent and Trademark Office v. Booking.com affirming that “Booking.com” is a protectable trademark.  This case stemmed from the United States Patent and Trademark Office’s (“PTO”) rejection of Booking.com’s attempt to register its domain name as a service mark for hotel registration services because it deemed the mark generic.  The PTO argued that adding a designation to a generic term does not confer trademark protection and that registering a “generic.com” domain name like “Booking.com” would cause an anticompetitive effect that the trademark statute is designed to protect against.  Both the district court and the Fourth Circuit Court of Appeals held that, although “booking” itself is a generic term that cannot be afforded trademark protection, “Booking.com” was a descriptive term that had acquired secondary meaning (i.e. it had become associated in the minds of consumers with a single source) and was thus protectable as a trademark.

The United States Supreme Court agreed.  In an 8-1 decision written by Justice Ginsburg, the Supreme Court focused on how consumers view the term, which was evidenced in the district court by Booking.com’s survey evidence that nearly 75% of consumers found Booking.com to be a brand name, rather than a generic term.  Following a relatively brief analysis, Justice Ginsberg stated simply, “[B]ecause ‘Booking.com’ is not a generic name to consumers, it is not generic.”

This is a significant holding, not only for one business that has been waiting for years to register its trademark but for many other businesses that use a “generic.com” domain name or that may be affected by this decision.

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