On Tuesday, the U.S. Supreme Court issued an unusual ruling on the status of the site’s name, ruling that “Booking.com” is eligible for a federal trademark even if it is based on a generic term. Bloomberg reported that the ruling gave Booking.com, which is owned by Booking Holdings, legal protections across the country to fight competing trademarks.
“There is no reason for us to deny Booking.com the same interest as other trademarks that are consistent with non-common terms.” Judge Ruth Bader Ginsburg wrote.
The U.S. Patent and Trademark Office had previously rejected Booking.com’s trademark application because they thought the name was generic, even with the addition of .com. However, the Supreme Court overturned the decision on the grounds that it was important to consider how consumers view names like Booking.com. “Because ‘Booking.com’ has been able to prove that it’s no longer a generic name for consumers, it’s not generic,” Ginsberg wrote.
U.S. trademark law generally does not allow a company to claim trademark ownership of the entire trade category, such as “cars” or “computers,” because it gives it an unfair advantage over competitors. But Booking.com argues that it needs to be able to trademark its name to prevent consumers from being misled by counterfeiters. David Bernstein, a lawyer for Booking.com, said the decision was “a victory for countless brand owners who have invested a lot of resources to build their own brands , such as Weather.com, Law.com, Wine.com and Hotels.com.” “
Stephen Breyer, the only justice to vote no, said the decision could lead to the emergence of generic trademarks, killing competition. “The term” “Booking.com” refers to an Internet booking service, a generic product sold by the respondent and his competitors. Not much, not much,” Breyer wrote. “By making this term eligible for trademark protection, I fear that today’s decision will lead to the proliferation of the “generic.com” trademark, granting its owners a monopoly over useful, memorable domain names. “
Booking.com’s trademark validity case is the first oral argument before the Supreme Court over the phone, which is the need for the COVID-19 pandemic.