Moskin, Connolly Tell U.S. Supreme Court that Booking.com Isn’t Generic

08 August 2019 Law360 News

Partner Jonathan Moskin and Associate Eoin Connolly were highlighted in the Law360 article, “Booking.com Tells Supreme Court Name Isn’t Generic,” which reported on a brief the lawyers filed in response to a petition for certiorari filed last month by the U.S. Patent and Trademark Office claiming that the Booking.com name is too generic to for trademark protection. The government has claimed that registering the name would have anticompetitive effects.

In their filing on behalf of Booking.com, Moskin and Connolly wrote that those arguments "bare speculation of possible future improper motives" that aren't supported by evidence — and warned that the real competitive risk lay in refusing to protect the company's name. "The PTO speculates that allowing the best-known internet travel service to register its name will somehow lead to abusive practices," the brief said. "Denying registration will only free unscrupulous competitors to prey on its millions of loyal consumers by falsely advertising as 'Booking.com' or making deceitful direct promotions."

The petition to the high court comes a years of litigation by Booking.com to secure a trademark registration on its name. Though the Trademark Trial and Appeal Board refused to register it on the grounds that the name was generic, a federal judge later ruled that the addition of ".com" could transform an otherwise generic term like "booking" into something that consumers might recognize as a trademark. The Fourth Circuit affirmed that ruling earlier this year.