Booking.com trademark case continues with Supreme Court

Recent brief for the Booking.com case says that the finding for the USPTO could result in "a mass extinction event for registered trademarks."

“The brief explains that a finding for the USPTO could result in ‘a mass extinction event for registered trademarks,’ since the Office has “spent decades registering marks that violate the government’s rule that a generic root term, coupled with ‘Company’ or ‘.com,’ can never be a trademark.”

In November, the U.S. Supreme Court granted a petition for certiorari filed by the U.S. Patent and Trademark Office (USPTO) asking the Court to consider “Whether the addition by an online business of a generic top-level domain (“.com”) to an otherwise generic term can create a protectable trademark.”

Booking.com filed its brief for the respondent in the case, arguing that “under the Lanham Act, the consumer is king,” and the fact that survey evidence has proven 74.8% of relevant consumers to consider BOOKING.COM a brand, rather than a generic name, “should end this case.”

In its July 2019 petition, the USPTO argued that the U.S. Court of Appeals for the Fourth Circuit’s holding that “.com” when added to “booking” was sufficient to make the term protectable as a trademark, “so long as the relevant public would understand the combination to refer to a specific business,” is contrary to “established principles of trademark law, and it conflicts with decisions of the Federal and Ninth Circuits, the only other courts of appeals that have considered the protectability of ‘generic.com’ terms.”

The Federal Circuit has found in previous cases that marks including “HOTELS.COM” and “LAWYERS.COM” were not protectable “based on highly similar evidence,” said the petition.

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