In an 8-1 decision, on June 30, 2020 the U.S. Supreme Court ruled in favor of Foley client Booking.com B.V., validating its trademark registration.
The court held in the case, USPTO v. Booking.com B.V., 19-46, that the addition of ".com" to an otherwise generic term could transform it into a protectable trademark.
After the Trademark Trial and Appeal Board (TTAB) denied registration of the mark BOOKING.COM on grounds of genericness, Foley commenced a de novo proceeding in the District Court for the Eastern District of Virginia, which ruled in favour of our client that the name was a protectable trademark. Indeed, it is one of the largest and best-known online reservation services in the world, and even in denying registration the TTAB had conceded it was logically and grammatically impossible to use the name BOOKING.COM as a generic term to name an entire class of services (such as travel agents). In 2019, the Fourth Circuit affirmed, declining to follow prior decisions of the Federal Circuit and the Ninth Circuit, based largely on the extent of the evidence presented of the extent of recognition enjoyed by the BOOKING.COM travel service. The U.S. Patent and Trademark Office (USPTO) then petitioned for certiorari, which the Supreme Court granted. It heard oral argument on May 4, 2020 – the first case heard remotely amidst the Covid-19 lockdown.
The USPTO had argued that allowing “generic.com” registrations would grant monopoly power to companies like Booking.com. The Court rejected that "sweeping rule," adopting a more flexible approach rooted in how consumers perceive such a web address. Justice Ruth Bader Ginsburg wrote, "Consumers ... do not perceive the term 'Booking.com' to signify online hotel-reservation services as a class. In circumstances like those this case presents, a “generic.com” term is not generic and can be eligible for federal trademark registration." The decision thus vindicates our client’s rights and clarifies the distinction between generic terms (such as the words “computer” or “travel agent”) which designate entire categories of goods or services and thus cannot be protected, and descriptive terms, such as “American Airlines” or “Citibank,” which are entitled to protection once they achieve consumer recognition.
Foley has worked with travel e-commerce giant, Booking.com B.V. for over a decade, and first conceived and implemented the strategy to challenge the decision of the TTAB after the USPTO declined to register the mark.
Partner Jonathan Moskin led the Foley team.