The travel reservation company Booking.com, a unit of Booking Holdings, deserves to be able to trademark its name, the US Supreme Court decided on Tuesday, overruling a federal agency that found it too generic to merit protection.
The court decided 8-1 that the US Patent and Trademark Office was incorrect when it denied the company’s application to trademark the name Booking.com, with the justices finding it distinctive enough that the agency should have approved it.
The court said consumers understand that Booking.com refers to a particular company, and not online hotel reservation services in general.
“Because ‘Booking.com’ is not a generic name to consumers, it is not generic,” liberal Justice Ruth Bader Ginsburg wrote in the ruling.
US law allows trademark registrations only on terms that are “descriptive,” or able to distinguish a particular product or service from others on the market.
“Generic” words that refer to an entire category of goods or services, like “car” or “computer,” cannot be protected under the law because that would give an unfair competitive advantage to the trademark holder.
Booking.com, based in Amsterdam, began using its name globally in 2006, and filed US trademark applications in 2011 and 2012. A US Patent and Trademark Office tribunal rejected those applications in 2016, saying “booking” is a generic term for a category of services and that the addition of “.com” did not transform it into a protected trademark. Lower courts sided with Booking.com, prompting the patent office to appeal to the Supreme Court.
The Supreme Court’s ruling may guide how some other companies, such as Salesforce.com and Home Depot, protect their brands from potential copycats. The high court’s May 4 oral argument in the case was the first that the justices held by teleconference due to the coronavirus pandemic. In another first, the public was able to hear arguments through a live audio feed.