Booking.com Court Decision: Consumer Perception is “Key” in Trademark Law

Written By: David T. Azrin Francelina Perdomo Klukosky

07/01/20
supreme court

Yesterday, the United States Supreme Court issued a decision in the Booking.com case. In a prior blog post, Booking.Com, A Historic Livestream On The Future Of Trademark Protection, we discussed the parties’ arguments and anticipated that the Court would likely allow booking.com to register because the Court had evidence that consumers identified the mark with its source, Booking.com B.V, and not any other company in the market offering the same exact services.

The ultimate test on whether any mark – even a generic term – can be registered is based on consumer perception. “[W]hether ‘Booking.com’ is generic turns on whether that term, taken as a whole, signifies to consumers the class of online hotel-reservation services,” the Court held. Generic terms are not subject to trademark protection because they refer to a category of goods or services, such as “booking” to reserve travel or lodging accommodations. The Supreme Court concluded, primarily relying on survey evidence, that because “Booking.com is not a generic name to consumers, it is not generic.”

The Supreme Court rejected the trademark office’s request to adopt a categorical rule that adding a .com ending to a generic term never makes the full name protectable. The trademark office argued that adding the .com ending is analogous to adding the word “Company” to a generic term, such as Wine Company, Cotton Company, or Grain Company, which cannot be registered or protected. The Court rejected this analogy, explaining that the .com ending is different than merely adding the word Company because only one entity can occupy a particular Internet domain name at a time, and a “generic.com” term might convey to consumers a source-identifying characteristic: an association with a particular website that refers to some specific entity.

The Supreme Court also rejected the trademark office’s concern that granting protection to booking.com might give the company a monopoly on the word “booking,” thereby preventing competitors from using the term “booking” or adopting domain names like “ebooking.com” or “hotel-booking.com.” Rather, the Court found, granting protection to “booking.com” would not necessarily prevent other competitors from using the word “booking” to describe their own services. The Court noted that Booking.com B.V’s attorneys had indicated that the company would not use its trademark registration to sue competitors with similar names, like ebooking.com, that share the generic element.

The Supreme Court decision, in this case, reiterates the principle that the primary focus of trademark law is the consumer. Consequently, the USPTO will likely continue to refuse registration of .com brands that are generic unless brand owners provide evidence of consumer perception to overcome such refusals. 

In order to ensure that your brand is protected, businesses should consult with counsel to decide the best strategy with regard to registration, in light of the Supreme Court’s decision. As part of our trademark prosecution services, we evaluate the strengths and registrability of our client’s brands to maximize the potential for successful registrations. 

about the authors

David T. Azrin

Partner

David T. Azrin represents clients in business law matters, including intellectual property, franchising, employment law, and commercial litigation matters.

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Francelina Perdomo Klukosky

Partner

Ms. Perdomo focuses her practice on intellectual property, corporate and commercial matters involving copyrights, trademarks, patents, false advertising, technology, digital media, music publishing, licensing, publicity rights, live events, table-top, and video games. Francelina represents authors, content creators and developers, music publishing, record and production companies in their ongoing business affairs. She often serves as outside general counsel to companies handling a variety of intellectual property and commercial matters.

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