In the first-ever United States Supreme Court case to take place over the phone, necessitated by the Covid-19 pandemic, Booking.com was found to be a trademarkable name, despite containing a generic term.
In an 8-1 ruling1, the Court decided the combination of the generic term Booking with a .com extension transforms the generic term into a recognizable and unique brand deserving of “the same benefits Congress accorded other marks qualifying as non-generic” (Justice Ruth Bader Ginsburg).
What was the problem?
The reason this is so important is due to the previous assertion that generic terms cannot be trademarked.2 This protects businesses by ensuring words essential to the ability to describe a company or service can’t be removed from circulation, whether that relates to an entire category of services such as cars or wine, or descriptors such as American.
Justice Stephen Breyer, the only voice in dissent, writes, “the term… refers to an internet booking service, which is the generic product that respondent and its competitors sell.” He continues by stating the “decision will lead to a proliferation of “generic.com” marks, granting their owners a monopoly over a zone of useful, easy-to-remember domains.”
Generic Terms
The standard approach to generalizations in trademarks has been long-established as impossible, with rulings going so far as to cancel previously registered trademarks when the brand becomes inseparable from the item – for example, Trampoline, Aspirin, Hoover, and Escalator.
Based on this, it may be difficult to see the logic behind Booking.com, a generic term plus .com, being eligible for trademarking.
Customer Interpretation
A fair amount of the ruling here was down to interpretation. When you think of booking, you probably think of travel agents, hotels, appointments, etc. But when thinking ‘Booking.com’, most respond with one company.
Similarly, companies such as American Airlines and American Express have active trademarks, but only with the full name; they don’t have a monopoly on the word American.
This customer appreciation of the brand transforms it from a generic phrase and into a trademarkable item, recognizable and distinct to the particular company; almost the exact opposite of Trampoline’s misfortune.
Distinctions
By creating a distinction, adding a .com to the end of a name can transform it from a generic phrase to a specific company without monopolizing or infringing on the rights of others.
David Bernstein, trademark attorney for Booking.com, went on to comment on how “brand owners… have invested significant resources in building their brands”, referencing companies such as “Weather.com, Law.com, Wine.com and Hotels.com” to emphasize his point that the .com does change the meaning of the term sufficiently.
What does this mean?
The Supreme Court had to tread carefully with this case. On the one hand, they needed to protect the rights of companies such as Booking.com against copycats. On the other, they need to protect smaller companies by ensuring the term booking cannot be monopolized, as this is an essential descriptor for many businesses.
The Court ruling is unlikely to assist or affect small and mid-sized businesses3. Firstly, because they would be unlikely to afford the marketing to build a distinctive brand from a generic domain. Secondly, because the trademark specifically relates to Booking.com, other companies will still be able to use the word booking when describing their services without infringement. Even though Booking.com has overcome this hurdle the scope of its protection most likely will be limited since it is a descriptive trademark.
More Information
If you would like more information on how this ruling could affect you or your business, or you are interested in registering a similar trademark, our intellectual property attorneys are dedicated to helping you establish and protect your IP rights. Contact us at (888) 666-0622 to schedule an appointment.
DISCLAIMER: The information contained in this article is for informational purposes only and is not legal advice or a substitute for obtaining legal advice from an attorney.