U.S. Supreme Court To Decide If Adding .COM Makes A Protected Trademark

By November 14, 2019 Disputes No Comments

The U.S. Supreme Court has agreed to hear an appeal to decide if adding “.com” to a generic term can make it trademarkable. The case involves the online hotel reservation site Booking.com who was prevented by the U.S. Patent and Trademark Office from trademarking the site’s name as it was too generic to deserve legal protection, reports Reuters.

Booking.com, based in Amsterdam, began using its name globally in 2006 and has filed trademark applications in 2011 and 2012.

A tribunal of the PTO rejected those applications in 2016, “saying Booking.com referred generically to the common meaning of booking lodging and transportation and cannot be used exclusively through a federal trademark registration,” reported Reuters.

The Reuters report notes that under “U.S. law, only terms that distinguish a particular product or service from others on the market can be trademarked.” Under this law, called The Lanham Act, trademark registration for generic terms are banned. Booking.com, reports the ABA Journal, argues the addition of “.com” to the generic term makes it a protectable trademark.

“The agency noted that federal courts have rejected trademarks for other similar names, such as hotels.com, mattress.com and lawyers.com.”

There followed an appeal by Booking.com who presented the results of a survey finding three-quarters (74%) “of consumers identified Booking.com as a brand name. The Richmond, Virginia-based 4th U.S. Circuit Court of Appeals sided with the company last February because the name as a whole is understood by the public to refer to a business.”

According to the PTO, the ABA Journal notes, the 4th Circuit decision allowed Booking.com “to rely on survey evidence of brand identification to obtain federal trademark protection for a generic term, thus ‘freez[ing] out’ its competitors from using domain names that accurately categorise their services.”

Booking.com, “asking the Supreme Court to let the 4th Circuit ruling stand, called itself ‘one of the best-known travel and accommodations services in the United States.’” It also said that “decisions on whether a term is generic are factual in nature and should be decided on a case-by-case basis,” according to the ABA Journal.

“Appealing to the Supreme Court, the Patent and Trademark Office said that the addition of ‘.com’ to a generic word does not render it distinctive.”

“The PTO itself conceded at the administrative level that ‘it is impossible to use BOOKING.COM in a grammatically coherent way to refer generically to anything,’ and that ‘it is not at all logical to refer to a type of product or service as a ‘booking.com,’ ” the company’s brief said.