Law360 called United States Patent and Trademark Office, et al., v. Booking.com B.V., one of the most important trademark decisions thus far of the year in the article, “Top 7 Trademark Rulings Of 2020: A Midyear Report.”
The U.S. Supreme Court affirmed the trademark registration of Foley client Booking.com, saying that the addition of ".com" to an otherwise generic term could transform it into a protectable trademark, siding with Booking.com in its long battle with the USPTO. The USPTO had asked for a bright-line rule, arguing that a simple generic term adorned with a ".com" ending should always be unprotectable, but the justices instead opted for a more flexible approach rooted in how consumers see things.
"Consumers do not in fact perceive the term 'Booking.com' that way," the court wrote. "That should resolve this case: Because 'Booking.com' is not a generic name to consumers, it is not generic."
The ruling clears the way for more companies with "generic.com" names to win trademark registrations, but approvals still won't be automatic. Such names will continue to face an uphill climb to prove that they are worthy of protection, requiring plenty of evidence that consumers view them as trademarks before they're approved.
The case is United States Patent and Trademark Office, et al., v. Booking.com B.V., case number 19-46, at the U.S. Supreme Court.