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Supreme Court sides with Booking.com in key trademark case

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’s 8-1 decision held that adding “.com” to a generic word can make the entire combination eligible for trademark protection.

“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.

The Booking.com case was the Supreme Court’s first oral argument ever conducted over the phone, a change of procedure due to the coronavirus pandemic.

Justice Stephen Breyer wrote in his dissent that the policy of trademarking the generic term is “inconsistent with trademark principles and sound trademark policy.”

“By making such terms eligible for trademark protection, I fear that today’s decision will lead to a proliferation of ‘generic.com’ marks, granting their owners a monopoly over a zone of useful, easy-to-remember domains,” Breyer wrote.

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.”

CNN

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