It is a long held principle of trademark law that generic terms cannot be registered for protection with the United States Patent and Trademark Office (USPTO). This principle has been challenged time and time again and time and time again the principle has been upheld. Trademarking a generic term has been deemed as too likely to cause confusion between the actual use of the term and the company that seeks to trademark it. One company, though, armed with a rather convincing survey, is attempting to change that.
Booking.com, a popular online hotel reservation service, attempted to trademark various versions of their logo in 2012. The USPTO made use of their authority, given to them through the Lehman Act, to block the trademark, citing that “booking” as well as “.com” are generic terms and as such cannot be trademarked. Booking.com promptly appealed. The Trademark Trial and Appeal Board agreed with the USPTO, again citing the need to prevent generic terms from becoming trademarks.
Booking.com then took the matter to the United States District Court for the Eastern District of Virginia. There they made the case, as they had to the USPTO and the Trademark Trial and Appeal Board, that if taken in its entirety the phrase “Booking.com” is not a generic term, and that to deny a trademark on the grounds that the phrase is made up of generic terms is incorrect. The district court agreed with Booking.com and reversed the previous decisions. The case then made its way to the U.S. Fourth Circuit Court of Appeal. Booking.com, during that appeal, presented a survey that they had taken, which identified that 74% of consumers looked at “Booking.com” as a brand name and not a collection of generic terms. The Fourth Circuit agreed with the district court and affirmed their opinion.
On November 8, 2019, the Supreme Court agreed to take on the case. Once heard, the decision handed down will likely have major implications for the future of trademark law. Should the Supreme Court agree with the Solicitor General and the USPTO and state that “booking” and “.com” are generic terms and therefore cannot be trademarked, trademark law will remain relatively unchanged. The precedent would most probably prevent similar websites from attempting to trademark their names. However, should the Supreme Court rule in favor of Booking.com, and agree with the company and the survey they provided that the phrase “Booking.com” as a whole, even if made up of generic terms, has the ability to be trademarked because it is identified by the general public as a brand rather than a collection of generic terms, then trademark law will be forever altered, and similar websites will be able to trademark their names. The Supreme Court is likely set to hear the case during their session next spring, which would make the decision due by the end of the 2019-2020 U.S. Supreme Court session.
