The Supreme Court sided with Booking.com on Tuesday, green-lighting the booking accommodations website to trademark the generic term associated with their domain name. It’s a key victory that could have ripple effects for businesses across the internet.
The court decided 8-1 that the US Patent and Trademark Office was incorrect when it denied the company’s application to trademark the name Booking.com, with the justices finding it distinctive enough that the agency should have approved it.
The court said consumers understand that Booking.com refers to a particular company, and not online hotel reservation services in general. “Because ‘Booking.com’ is not a generic name to consumers, it is not generic,” liberal Justice Ruth Bader Ginsburg wrote in the ruling.
“We have no cause to deny Booking.com the same benefits Congress accorded other marks qualifying as nongeneric,” Justice Ruth Bader Ginsburg wrote in the majority opinion.
Booking.com had filed to register its name at the US Patent and Trademark Office. But the office initially denied the registration, arguing that generic names are not eligible for trademark protection.
A US Patent and Trademark Office tribunal rejected those applications in 2016, saying “booking” is a generic term for a category of services and that the addition of “.com” did not transform it into a protected trademark. Lower courts sided with Booking.com, prompting the patent office to appeal to the Supreme Court.
During arguments, lawyers for the Patent and Trademark Office asserted that the use of generic terms in business names cannot be protected as trademarks, and therefore, even if a generic term has taken on a secondary meaning, it should not be able to be trademarked.
Lawyers for Booking.com argued in their brief that their client needs trademark protection “to prevent competitors from opening storefront Booking.com travel agencies, or from diluting its brand by selling Booking.com-themed travel products in airport shops.”