Scarinci Hollenbeck, LLC, LLCScarinci Hollenbeck, LLC, LLC

Firm Insights

Supreme Court Adds Booking.com Trademark Suit to IP Docket

Author: Scarinci Hollenbeck, LLC

Date: December 19, 2019

Key Contacts

Back

SCOTUS Recently Granted Certiorari in United States Patent and Trademark Office v. Booking.com B.V.

The U.S. Supreme Court recently granted certiorari in United States Patent and Trademark Office v. Booking.com B.V.  The issue before the Court is whether the addition of a generic top-level domain (“.com”) to an otherwise generic term can create a protectable trademark.

Supreme Court Adds Booking.com Trademark Suit to IP Docket

Generic Trademarks

Under the Lanham Act, a trademark is a “word, name, symbol, or device” used by a person “to identify and distinguish his or her goods” in commerce and “to indicate the source of the goods.”  Abercrombie & Fitch Co. v. Hunting World recognized and established a spectrum of trademark strength and categories of protection along that spectrum.  To determine whether a proposed mark is protectable, the USPTO and courts determine the strength of the mark by considering a variety of factors—e.g., the nature of the word, the type of design, and/or the associated product or services—placing the mark into one of four categories of trademark distinctiveness.  Those categories are, in ascending order: (1) generic, (2) descriptive, (3) suggestive, or (4) arbitrary or fanciful.

Generic terms are not entitled to trademark protection because trademarking a generic term would effectively grant the owner a monopoly over a term in common use.  That is, a mark is generic if it is the “common name of a product” or “the genus of which the particular product is a species.” OBX-Stock, Inc. v. Bicast, Inc., 558 F.3d 334, 339–40 (4th Cir. 2009).  Generic terms are not entitled to trademark protection because they do not identify the source of a product or service—they are effectively the name for the product or service itself.

Descriptive terms may be protected, but only if “the registrant shows that [the term] has acquired secondary meaning, i.e., it ‘has become distinctive of the applicant’s goods in commerce.’” Meanwhile, suggestive, arbitrary or fanciful marks are “automatically entitled to protection because they naturally serve to identify a particular source of a product.” Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768 (1992).

Booking.com Trademark Registration

Booking.com operates a Web site on which customers can book hotel accommodations. In 2012, the company filed four US federal trademark applications for marks that included or consisted of the term “Booking.com.” The applications sought registration for use of the marks in connection with “online hotel reservation services.”

The United States Patent and Trademark Office (USPTO) refused registration of the marks.  Instead, the USPTO concluded that the term “booking” is generic for the services for which Booking.com sought registration. Moreover, the addition of the generic top-level domain “.com” did not create a protectable mark.

On appeal, the U.S. District Court for the Eastern District of Virginia held that the term Booking.com was non-generic. The Fourth Circuit Court of Appeals affirmed. It held that the public’s understanding of Booking.com, taken as a whole, establishes it as a descriptive mark rather than a generic term. In support, it cited the USPTO’s lack of evidence demonstrating that the public uses “booking.com” generically. The Fourth Circuit also placed great weight on Booking.com’s Teflon survey, which found that 74.8% of respondents identified Booking.com as a brand name. According to the appeals court, “the survey is strong evidence that the public does not understand Booking.com to refer to the proposed mark’s generic meaning.”

In addition, the Fourth Circuit rejected the USPTO’s argument that adding the top-level domain “.com” to a generic second-level domain like “booking” is necessarily generic. “No circuit has adopted the bright-line rule for which the USPTO advocates—indeed, sister circuits have found that when ‘.com’ is added to a generic TLD, the mark may be protectable upon a sufficient showing of the public’s understanding through consumer surveys or other evidence,” the court wrote.

USPTO Seeking Supreme Court Review

The USPTO is asking the Supreme Court to overrule the Fourth Circuit. As the USPTO highlighted in its petition for certiorari, the Fourth Circuit’s decision conflicts with decisions of the Federal and Ninth Circuits, which have held on materially similar facts that Hotels.com, Advertising.com, Lawyers.com, and Mattress.com are all generic. For instance, the Federal Circuit held that the addition of “.com” does not create a protectable mark, because it conveys only that respondent “operates a commercial website via the internet.” In re Hotels.com, L.P. 573 F.3d 1300, 1304 (Fed. Cir. 2009).

The USPTO also argues that the Fourth Circuit’s decision conflicts with existing U.S. Supreme Court precedent. In Goodyear’s India Rubber Glove Manufacturing Co. ., 128 U.S. 598 (1888), the Supreme Court held that the addition of an entity designation like “Company” or “Inc.” to a generic term like “wine,” “cotton,” or “grain” does not create a protectable mark, but instead “only indicates that parties have formed an association or partnership to deal in such goods.” According to the USPTO, “just as no company could register a trademark in ‘Booking Inc.,’ respondent should not be permitted to register a trademark in ‘BOOKING.COM.’”

The Supreme Court has not yet scheduled oral arguments. Nonetheless, a decision is expected before the term ends next June.

If you have questions, please contact us

If you have any questions or if you would like to discuss the matter further, please the Scarinci Hollenbeck attorney with whom you work, at 201-806-3364.

No Aspect of the advertisement has been approved by the Supreme Court. Results may vary depending on your particular facts and legal circumstances.

Scarinci Hollenbeck, LLC, LLC

Related Posts

See all
The Current Administration's Proposals for the Financial Services and Banking Industries Will Affect Your Business post image

The Current Administration's Proposals for the Financial Services and Banking Industries Will Affect Your Business

Since his inauguration two months ago, Donald Trump’s administration and the Congress it controls have indicated important upcoming policy changes. These changes will impact financial services policies and priorities. The changes will particularly affect cryptocurrency, as well as banking rules and regulations. Key Regulatory Changes in Cryptocurrency For example, in the burgeoning cryptocurrency business environment, […]

Author: Dan Brecher

Link to post with title - "The Current Administration's Proposals for the Financial Services and Banking Industries Will Affect Your Business"
Tips for Commercial Landlords Impacted by Wave of Retailer Bankruptcies Part 1 post image

Tips for Commercial Landlords Impacted by Wave of Retailer Bankruptcies Part 1

The retail sector has experienced a wave of bankruptcy filings over the last year. Brick-and-mortar businesses in financial distress include big-name brands like Big Lots, Party City, The Container Store, and Vitamin Shoppe. When large retailers seek bankruptcy protection, they are not the only businesses impacted. Landlords can be particularly hard hit. While commercial landlords […]

Author: Brian D. Spector

Link to post with title - "Tips for Commercial Landlords Impacted by Wave of Retailer Bankruptcies Part 1"
How Understanding Bankruptcy Trends Can Benefit Your Business post image

How Understanding Bankruptcy Trends Can Benefit Your Business

The bankruptcy legal landscape presents both challenges and opportunities for businesses navigating financial distress. Understanding current bankruptcy trends can help businesses make more informed and strategic decisions. Corporate Bankruptcy Filings Trending Upwards Bankruptcy filings continued to trend upwards in 2024. According to statistics released by the Administrative Office of the U.S. Courts, personal and business […]

Author: Brian D. Spector

Link to post with title - "How Understanding Bankruptcy Trends Can Benefit Your Business"
SEC Takes Actions Against Issuers for Failure to File Form D post image

SEC Takes Actions Against Issuers for Failure to File Form D

In December, the U.S. Securities and Exchange Commission (SEC) announced charges against two privately held companies for failing to file a Form D notice, which is generally utilized for exempt securities offerings. Here, the SEC’s enforcement sends a strong message: compliance with regulatory requirements is not optional and failure to comply can have significant consequences. […]

Author: Kenneth C. Oh

Link to post with title - "SEC Takes Actions Against Issuers for Failure to File Form D"
Redefining Labor Relations: NLRB's Pivot from Abruzzo’s Memoranda post image

Redefining Labor Relations: NLRB's Pivot from Abruzzo’s Memoranda

On February 14, 2025, the Office of General Counsel (OGC) of the National Labor Relations Board (NLRB) under Acting General Counsel William B. Cowen issued Memorandum 25-05, “New Process for More Efficient, Effective, Accessible and Transparent Case handling.” The Memorandum rescinds nearly all of the Memoranda issued by his direct predecessor, Jennifer Abruzzo, setting the […]

Author: Matthew F. Mimnaugh

Link to post with title - "Redefining Labor Relations: NLRB's Pivot from Abruzzo’s Memoranda"
What Are FIRPTA Withholding Requirements? post image

What Are FIRPTA Withholding Requirements?

If you purchase real property from a foreign person or entity, you may be required to withhold taxes from your payment to the seller under the Foreign Investment in Real Property Tax Act (FIRPTA). The federal tax law is designed to ensure that foreign sellers pay any applicable capital gains tax on profits realized from […]

Author: Jesse M. Dimitro

Link to post with title - "What Are FIRPTA Withholding Requirements?"

No Aspect of the advertisement has been approved by the Supreme Court. Results may vary depending on your particular facts and legal circumstances.

Sign up to get the latest from our attorneys!

Explore What Matters Most to You.

Consider subscribing to our Firm Insights mailing list by clicking the button below so you can keep up to date with the firm`s latest articles covering various legal topics.

Stay informed and inspired with the latest updates, insights, and events from Scarinci Hollenbeck. Our resource library provides valuable content across a range of categories to keep you connected and ahead of the curve.

Let`s get in touch!

* The use of the Internet or this form for communication with the firm or any individual member of the firm does not establish an attorney-client relationship. Confidential or time-sensitive information should not be sent through this form.

Sign up to get the latest from the Scarinci Hollenbeck, LLC attorneys!

Please select a category(s) below: