2 July 2020
Article

Booking.com nevertheless admitted as a trademark in the US

Recently, the brand name BOOKING.COM was nevertheless allowed to be registered as trademark in the United States (U.S.). The supreme court of the U.S. ruled that BOOKING.COM is not a genericname, rendering trademark protection in the U.S. possible (in principle).

In the past, trademark registration for the brand BOOKING.COM had been applied for multiple times, but these applications were consistently rejected by the United States Patent and Trademark Office (USPTO). The USPTO is of the opinion that booking.com is a generic name for online services for hotel reservations and that it is therefore impossible in principle to register as a trademark.

Generic names, or general indications for a group of goods or services can, in the U.S., by definition not be registered. Even for a trademark with a reputation1, a generic name cannot be registered as trademark. However, when a trademark is descriptive, the trademark can be registered if reputation is demonstrated.

The term ‘booking’ for online services for hotel reservations is, without doubt, a generic name for this type of service. Booking.com agrees with the USPTO that booking is a generic name, which therefore does not qualify for registration. Booking.com, however, argues that adding the suffix ‘.com’ ensures that this is a descriptive term. This descriptive term would then be able to gain distinctiveness by means of its reputation. Booking.com, in addition, has submitted consumer surveys showing that 74% of those interviewed recognises BOOKING.COM as a trademark. The Dutch company therefore appealed, and their case was eventually upheld in court.

The USPTO then appealed, but was unsuccessful in their appeal case. The USPTO argued that the combination of a generic name with the suffix ‘.com’ remains  generic and therefore is to be rejected as trademark. As a result the case went to the supreme court.

The supreme court has now ended this ambiguity. The supreme court recently ruled that BOOKING.COM can indeed be registered as a trademark in the U.S. They ruled that a combination of a generic term and the suffix ‘.com’, is only generic for certain products or services if it is deemed so by the relevant public. In the future, the USPTO will have to do this test. In the case of BOOKING.COM, the supreme court ruled that consumers generally don’t see the term ‘booking.com’ as a general term for online hotel reservations. Now that the supreme court has ruled that BOOKING.COM is not a generic name, the trademark can be registered as a trademark yet, as lower courts had already determined that the brand had obtained their distinctiveness by means of reputation.

 This ruling is good news for many online companies that offer their services under a generic trademark  name in combination with a domain name (.com) and want to obtain trademark registration in the U.S. The ruling does not, however, imply that all brands consisting of a generic term with an extension like .com will be granted a trademark on this basis. It will have to be proven that the consumer considers the mark as non-generic. The trademark cannot be descriptive of the goods or services applied for, unless distinctiveness by reputation is proven. Therefore, in most cases, distinctiveness by means of reputation will still have to be proven.

It is good, however, to keep in the back of the mind that the scope of protection of this type of trademarks will nevertheless be small, as a trademark holder cannot act against the use of the generic name alone, but only against use of the before mentioned combination of a generic name and an extension.

 

1 a Trademark with a reputation is a brand that is in itself not distinctive, but has gained distinctiveness by long term and intensive use.

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