Supreme Court Upholds Booking.com Trademark Registration

• Published date: 02 July 2020
• Subject Matter: Intellectual Property, Trademark
• Law Firm: Proskauer Rose LLP
• Author: Mr Brendan O'Rourke, Mark D. Harris, Jeffrey H. Warshafsky and Monique T. Curry

In a decision issued on June 30, the U.S. Supreme Court held that a generic word combined with ".com," such as Booking.com, is entitled to federal registration if consumers perceive the combined mark as a non-generic brand name. We have been closely following this case not only because of its important implications for trademark owners, but also because we submitted an amicus brief on behalf of a group of Survey Scholars and Consultants that advocated for the very position the Supreme Court ultimately adopted.

The United States Patent and Trademark Office ("PTO") had refused to register the Booking.com mark because, in its view, the combination of a generic term with a generic top-level domain ("TLD") (e.g., ".com") necessarily results in a generic mark. Generic trademarks are not entitled to federal registration. Booking.com successfully challenged the PTO's decision in the district court, which found based on a consumer survey and other evidence that consumers perceive the Booking.com mark as a brand name, not a generic term. The Fourth Circuit affirmed the lower court's decision, and the PTO appealed to the Supreme Court.

In an 8-1 decision, the Supreme Court affirmed the Fourth Circuit's decision. Justice Ginsberg delivered the majority opinion, with a short concurrence from Justice Sotomayor and a dissent from Justice Breyer.¹

Justice Ginsberg began by laying out some core principles of trademark law that will be familiar to many readers of this client alert:

• Trademarks exist on a continuum of distinctiveness with generic marks'the name of a class of products or services'being ineligible for registration and unprotected.
• Descriptive marks may be eligible for registration and for protection against infringement if they have sufficient consumer recognition (also known as secondary meaning).
• Whether a mark is generic or descriptive depends on how consumers perceive the mark as a whole.

Applying these principles to the case at hand, the Court held that the question of whether a domain name trademark is generic should be answered just as it would be for any other type of trademark: "Whether any 'generic.com' term is generic . . . depends on whether consumers in fact perceive that term as the name of a class or, instead, as a term capable of distinguishing among members of the class." Slip op. at 11. The Court recognized that consumer surveys are "helpful evidence" in answering that question.

In the case of the Booking.com mark, it was undisputed that...