US Supreme Court to Review Booking.com Case in Trademark Test

The US Supreme Court has recently agreed to hear the arguments over the trademark case involving an online hotel reservation service, Booking.com, and decide whether it is entitled to Trademark Protection for its name or not. Based out of Amsterdam, Booking.com began using its name globally in 2006 and filed various Trademark Applications between 2011 and 2012. The trademark dispute over the site’s name began in 2016 when the US Patent and Trademark Office (USPTO) had rejected Booking.com’s request to trademark its name. The USPTO said that the name Booking.com was way too generic for obtaining trademark protection.

Booking.com challenged the USPTO’s decision in court, and the company prevailed in 2017 when Leonie Brinkema, the US District Court Judge in Alexandria, Virginia, said in a ruling that although the word ‘Booking’ is generic, adding the top-level domain ‘.com’ qualifies it for Trademark Registration.

However, the USPTO had then appealed to the Richmond, Virginia-based 4th Circuit Court of Appeals, which also ruled in favor of Booking.com by stating a few slightly different reasons. The appellate judges said that the name Booking.com as a whole is understood by the public to refer to a particular business, and the USPTO had failed to prove that customers believe Booking.com, in general, refers to online hotel reservation services.

The USPTO then asked the US Supreme Court to review the 4th Circuit Court of Appeals’ ruling and accordingly make a decision. While appealing to the Supreme Court, the USPTO said that the addition of ‘.com’ to a generic word does not make it distinctive. On the other hand, Booking.com has asked the Supreme Court to uphold the 4th Circuit Court of Appeals’ ruling and referred to itself as one of the best-known accommodation and travel services in the US.

The Circuit Court of Appeals in 2009 had ruled that the names ‘Mattress.com’ and ‘Hotels.com’ weren’t entitled to trademark protection. Booking.com countered that by saying customers know the term Booking.com as a company name. It even went forward and specifically took reference from a survey, which indicated that approximately 75% of the customers recognize Booking.com as a brand and not as a generic service.