Supreme Court Upholds Booking.com Trademark Registration

• Published date: 02 July 2020
• 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...