Booking.com Supreme Court Win Paves Way for Other Companies

Booking B.V. applied for 4 trademarks with the US Patent and Trademark Office for the use of “Booking.com” in a word and stylized mark, which was rejected by the assigned Examiner, saying it was too generic and indistinctive under the Lanham Act.  Also known as the Trademark Act of 1946, the Lanham Act is the federal statute that governs all trademarks, service marks, and any unfair competition in the marketplace.

Booking.com appealed to the Trademark Trial and Appeal Board (TTAB) in an attempt to reverse the Examiner’s rejections.  The company brought forth the argument that their mark should be registered due to the provisions provided under the Lanham Act, which states that generic remarks may be registered if they acquire secondary meaning, or as it relates to this case, that the mark in question for the website is synonymous for the company that owns it.  TTAB however, counter-argued that Booking.com did not provide enough evidence that “Booking.com” has become what the company is most recognized as. 

The case went all the way to the Supreme Court, and Justice Ginsberg authored an 8-1 opinion to reverse the TTAB’s decision to allow Booking.com to register their marks based on the evidence that the general public easily recognizes what services Booking.com offers.  SCOTUS reversed TTAB’s decision based on previous history and practices of the USPTO.

While Booking.com’s protection against infringers using “booking” within their marks for similar services is alive and well, this decision is extraordinary in that it paves the way for similar companies that were previously denied “.com” marks. Companies now have the ability to expand upon their protections - if they can provide the necessary evidence that their names and .com designations are the same.

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