High Court OKs Trademark Protection for Booking.com

The U.S. Supreme Court. (Courthouse News photo/Jack Rodgers)

WASHINGTON (CN) — The Supreme Court ruled 8-1 Tuesday that companies with “.com” in their names are eligible for federal trademark protection based on consumer perception, even if a company’s moniker is otherwise generic. 

“Because ‘Booking.com’ is not a generic name to consumers, it is not generic,” Justice Ruth Bader Ginsburg wrote for the majority in a 14-page opinion

Booking.com filed suit in Virginia after the Patent and Trademark Office refused to register trademarks with the company’s name.

Under the PTO’s logic, the term “booking” is generic and thus ineligible for trademark protection under federal law. Adding the domain “.com” does nothing to change that fact, the government argued. 

But the popular travel booking website — self-branded as “The World’s #1 Choice for Booking Accommodations” — won the legal battle in the district court and Fourth Circuit, before prevailing once again in Washington on Tuesday. 

“In the PTO’s view, which the dissent embraces, when a generic term is combined with a generic top-level domain like ‘.com,’ the resulting combination is generic. In other words, every ‘generic.com’ term is generic according to the PTO, absent exceptional circumstances. The PTO’s own past practice appears to reflect no such comprehensive rule,” Ginsburg wrote.

The high court remained unconvinced by the trademarking agency’s claim that adding “.com” to a generic term does not warrant protection any more than adding “Company,” in terms of conveying source-identifying meaning.

“That premise is faulty. A ‘generic.com’ term might also convey to consumers a source-identifying characteristic: an association with a particular website. As the PTO and the dissent elsewhere acknowledge, only one entity can occupy a particular Internet domain name at a time,” Ginsburg wrote. 

Faulting the government for relying on an incorrect interpretation of the Supreme Court’s 1888 ruling in Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., the majority cautioned that its latest ruling depends on consumer perceptions.

“While we reject the rule proffered by the PTO that ‘generic.com’ terms are generic names, we do not embrace a rule automatically classifying such terms as nongeneric. Whether any given ‘generic.com’ term is generic, we hold, depends on whether consumers in fact perceive that term as the name of a class or, instead, as a term capable of distinguishing among members of the class,” Ginsburg wrote. 

U.S. Patent and Trademark Office press secretary Paul Fucito declined to comment on the decision Tuesday. 

Debevoise & Plimpton partner David Bernstein, co-counsel for Booking.com, applauded the justices’ decision that trademark protection should depend on consumer outlook of a brand name.

“The Supreme Court has confirmed what millions of consumers have known for years – Booking.com is a brand name, not simply a web address,” Bernstein said in a statement Tuesday.  

Justice Stephen Breyer stood as the sole dissenter from the majority opinion. 

The liberal justice argued that trademark law does not protect generic terms that do nothing more than name the product or service available to consumers. 

“The company’s name informs the consumer of the basic nature of its business and nothing more. Therein lies the root of my disagreement with the majority,” Breyer wrote in a 13-page dissent. 

Breyer contended that granting trademark protections to companies like Booking.com sets up already advantaged business owners to monopolize easy-to-remember domains and inhibits free commerce competition online. 

“Multiple brick-and-mortar companies could style themselves ‘The Wine Company,’ but there can be only one ‘wine.com.’ And unlike the trademark system, that exclusivity is worldwide,” the justice wrote. 

The case decided Tuesday, U.S. Patent and Trademark Office v. Booking.com, landed prominently in the annals of history in May when the Supreme Court heard arguments for the first time by teleconference — available by livestream to the public. 

The Justice Department and Williams & Connolly attorney Lisa Schiavo Blatt, who argued the case for Booking.com, did not respond to requests for comment. 

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