Booking.com overcomes generic argument in US trademark battle

The US Supreme Court has agreed with the holiday booking site’s argument that its Booking.com brand name is not a generic term.

As we previously covered, the holiday booking site Booking.com has taken its attempt to register its domain name brand name as a trademark in the US all the way to the US Supreme Court. In doing so, it has raised the debate as to whether the addition of a dot.com to the end of a generic word qualifies a brand name for registration as a trademark.

In its 30 June ruling, the US Supreme Court agreed that, in this instance, it does. The majority opinion of that Court was that a generic term with a dot.com added to it will only be seen as a generic name for a class of goods or services, if consumers believe that to be the case.

Assessing whether a dot.com mark is generic

In the opinion, Justice Ginsburg set out the following principles for assessing whether a dot.com mark is generic:

• 1. A generic term is one that names a ‘class’ of goods or services, rather than a specific feature or exemplification of that class;
• 2. Where the word is a compound term, when assessing distinctiveness the term’s meaning as a whole should be considered; and
• 3. The meaning of a term is the meaning that is had to its consumers.

As consumers do not consider Booking.com to be a class of online travel reservation services in general, ‘Booking.com’ is not a generic mark therefore.

More than a website signifier

The Court also considered the argument put forward by the USPTO that adding dot.com to a generic term simply served to signify that the company has an online presence. However, this argument was found to be inconsistent with previous (post-Lanham Act) registrations, such as Art.com for an online retailer offering art supplies and Dating.com for the online dating site. If Booking.com were not successful then this would lead to cancellation actions for those earlier marks.

The voice of dissent

In his dissenting judgement, Justice Beyer disagreed with the majority ruling, finding that the mark still held generic value, prevents competitors from using a term that is otherwise generic to their industry, and does not meet the requirement for a trademark to be distinctive. In his opinion, the “courts must determine whether the combination of generic terms conveys some distinctive, source-identifying meaning that each term, individually, lacks”. In other words, if the meaning of the term as a whole is no greater than the individual parts, the compound itself is generic too.

Finally, Beyer J also agreed with the principles raised in the earlier Goodyear’s India Rubber Glove v Rubber Co ruling, and relied on by the USPTO in its arguments, that adding a designation to a generic term does not “magically transform a generic name for a product or service into a trademark”. However, this case related to the addition of the word ‘company’ to a generic term, rather than the addition of a dot.com, which the majority held to be more of a unique identifier.

A fair decision

The Supreme Court decision appears fair given Booking.com’s longstanding use and establishment within the market, not to mention the allowance for similar marks in the past. The case now presents an interesting precedent in the US, although the outcome may well have been different had the applicant not been so established in the market and known to consumers.

For specific guidance on filing trademarks to protect domain names or for any other trademark queries, please speak to your Novagraaf attorney or contact us below. You can also find out more about the approach to dot.com and generic marks in Europe in our earlier article 'Booking.com: Does a dot.com make a brand name distinctive?'.

Megan Taylor is a Trademark Administrator based in Novagraaf’s London office.