In the case of USPTO v. Booking.com, it was raised interestingly what constitutes a generic mark. The company In the case of USPTO v. Booking.com, it was raised interestingly what constitutes a generic mark. The company Booking.com, which operates a website for booking travel, applied to the USPTO to register the mark "In the case of USPTO v. Booking.com, it was raised interestingly what constitutes a generic mark. The company Booking.com, which operates a website for booking travel, applied to the USPTO to register the mark " Booking.com." Because the USPTO believed that customers would interpret In the case of USPTO v. Booking.com, it was raised interestingly what constitutes a generic mark. The company Booking.com, which operates a website for booking travel, applied to the USPTO to register the mark "Booking.com." Because the USPTO believed that customers would interpret Booking.com to principally refer to a class of online registration services for travel, tours, and hotels, the mark was ultimately rejected by the USPTO. Additionally, the USPTO claimed that adding ".com" to the end of a generic phrase does not make it less so. In this decision, the Supreme Court dissented from the USPTO and argued that whether a mark is generic depends on what it means to consumers, who in this case see "In the case of USPTO v. Booking.com, it was raised interestingly what constitutes a generic mark. The company Booking.com, which operates a website for booking travel, applied to the USPTO to register the mark "Booking.com." Because the USPTO believed that customers would interpret Booking.com to principally refer to a class of online registration services for travel, tours, and hotels, the mark was ultimately rejected by the USPTO. Additionally, the USPTO claimed that adding ".com" to the end of a generic phrase does not make it less so. In this decision, the Supreme Court dissented from the USPTO and argued that whether a mark is generic depends on what it means to consumers, who in this case see "Booking.com" as a distinct company.
According to the court, if the " Booking.com" mark were generic, "a consumer... could ask a frequent traveller to name her favourite "According to the court, if the "Booking.com" mark were generic, "a consumer... could ask a frequent traveller to name her favourite " .com" provider." The court emphasised that customers do not mistake Travelocity for According to the court, if the "Booking.com" mark were generic, "a consumer... could ask a frequent traveller to name her favourite "Booking.com" provider." The court emphasised that customers do not mistake Travelocity for Booking.com, a competing booking site. In the end, the court determined that when assessing the word's distinctiveness at the USPTO, "Booking" and ".com" should be considered as a single phrase. As a result, simply adding ".com" to the end of a generic name might be enough to qualify it for federal trademark protection. This ruling makes it possible for companies to register federal trademarks for their domain names and product names at the same time.
Booking.com (defendant) is a popular online travel agency. Booking.com (defendant) is a popular online travel agency. Booking.com filed with the U.S.
Patent and Trademark Office (USPTO) (plaintiff) to trademark "Booking.com." In the eyes of
the USPTO " Booking.com" is a "generic" term, which is not able to be trademarked.
Booking.com (defendant) is a popular online travel agency. Booking.com (defendant) is a popular online travel agency. Booking.com filed with the U.S.
Patent and Trademark Office (USPTO) (plaintiff) to trademark "Booking.com." In the eyes of
the USPTO " Booking.com" is a "generic" term, which is not able to be trademarked.
Booking.com (defendant) is a popular online travel agency. Booking.com (defendant) is a popular online travel agency. Booking.com filed with the U.S.
Patent and Trademark Office (USPTO) (plaintiff) to trademark "Booking.com." In the eyes of
the USPTO " Booking.com" is a "generic" term, which is not able to be trademarked.
Booking.com (defendant) is a popular online travel agency. Booking.com (defendant) is a popular online travel agency. Booking.com filed with the U.S.
Patent and Trademark Office (USPTO) (plaintiff) to trademark "Booking.com." In the eyes of
the USPTO " Booking.com" is a "generic" term, which is not able to be trademarked.
Booking.com (defendant) is a popular online travel agency. Booking.com (defendant) is a popular online travel agency. Booking.com filed with the U.S.
Patent and Trademark Office (USPTO) (plaintiff) to trademark "Booking.com." In the eyes of
the USPTO " Booking.com" is a "generic" term, which is not able to be trademarked.
Booking.com (defendant) is a popular online travel agency. Booking.com (defendant) is a popular online travel agency. Booking.com filed with the U.S.
Patent and Trademark Office (USPTO) (plaintiff) to trademark "Booking.com." In the eyes of
the USPTO " Booking.com" is a "generic" term, which is not able to be trademarked.
Booking.com (defendant) is a popular online travel agency. Booking.com (defendant) is a popular online travel agency. Booking.com filed with the U.S.
Patent and Trademark Office (USPTO) (plaintiff) to trademark "Booking.com." In the eyes of
the USPTO Booking.com" is a "generic" term, which is not able to be trademarked.
The mark in question, Booking.com, is used by the trademark applicant, Booking.com BV (, Booking.com BV (Booking.com), to advertise and provide its online travel reservation services. In order to register the Booking.com mark in the United States based on an existing international registration, register the Booking.com mark in the United States based on an existing international registration, Booking.com submitted four applications to the United States Patent and Trademark Office (USPTO) in 2011 and 2012. The register the Booking.com mark in the United States based on an existing international registration, Booking.com submitted four applications to the United States Patent and Trademark Office (USPTO) in 2011 and 2012. The Booking.com mark is a descriptor of Booking.com's services, hence the examiner first rejected these petitions on the grounds that they were ineligible for registration. The examiner issued a new refusal, finding that the Booking.com mark was generic when applied to the services in question or, alternatively, that the mark was merely descriptive, and The examiner issued a new refusal, finding that the Booking.com mark was generic when applied to the services in question or, alternatively, that the mark was merely descriptive, and Booking.com had failed to demonstrate that it had acquired the necessary secondary meaning to overcome the refusal despite Booking.com's objection that the Booking.com mark had acquired distinctiveness.
Following the denial of these petitions, Booking.com notified the Trademark Trial and Appeal Board (TTAB) of its intention to appeal each application and asked for consolidated briefing. The TTAB accepted the appeal; however, in three different decisions, the TTAB ultimately upheld the four rejections of the subject petitions.
The Fourth Circuit's ruling was upheld by the US Supreme Court on June 30, 2020, in an 8-1 decision that rejected the USPTO's argument that the word "Booking.com" is generic and unsuitable for federal trademark registration. The Court ruled that Booking.com" cannot be regarded as a generic name because it may be distinguished by customers from a class of online hotel reservation services. The USPTO argued that the addition of ".com" to a generic phrase does not transmit any distinguishing meaning from one provider to another, but the Court rejected this claim. According to Justice Ginsburg, who wrote the majority opinion, "[a] consumer who is familiar with that feature of the domain-name system can conclude that BOOKING.COM belongs to some unique entity" since "only one entity can possess a certain Internet domain at a time."
The Court stated that a generic term "identifies a 'class' of products or services, rather than any particular attribute" of that class in order to arrive at the conclusion that the Booking.com mark was not generic and so not eligible for trademark protection. The Court further stated that while determining whether a mark has gained distinctiveness or secondary meaning, compound phrases must be considered "as a whole." Finally, the Court stated that the term's "meaning to consumers" will evaluate a mark's distinctiveness.
In its approach, the Court cited the Lanham Act's original objective and stated that a mark's distinctiveness or genericism is primarily determined by consumer perception. To put it another way, the Court stated that "if ' Booking.com' were generic, we might expect customers to consider Travelocity-another such service-to be a if 'Booking.com' were generic, we might expect customers to consider Travelocity-another such service-to be a Booking.com." The Court did not find any proof that customers had this perception of the Booking.com" brand.
The Supreme Court declined to expand the decision in Goodyear to include corporate names as domain names and pointed out that the addition of "Corporation" or "Inc" denoting a partnership or association of a company does not always apply to phrases ending in "generic.com." A customer could, in fact, perceive a "generic.com" phrase to be a source-identifying characteristic, and may be able to conclude that "Booking.com" referred to "some specific company," according to the Court's analysis.
The USPTO was worried that a Booking.com" trademark would prevent rivals from using the term "booking," but the Supreme Court rejected that worry as well, saying that a competitor's usage "does not infringe a mark unless it is likely to confuse consumers." The Court pointed out that the fair use doctrine would shield competitors from liability even in scenarios where there may be consumer misunderstanding if a descriptive phrase is used to just describe one's goods or services in a fair and good faith way.
Conclusion
The USPTO may no longer generally decide that adding ".com" to a generic term will automatically make the compound term generic, according to the Supreme Court's ruling in USPTO v. Booking.com. These compound marks may very well be eligible for federal trademark protection when the phrase has developed distinctiveness in the public's eyes for the mark in question. The Supreme Court did not provide a particular threshold for what must be demonstrated in order to establish distinctiveness; therefore, it will be crucial for companies to keep an eye on whether the USPTO provides additional advice on this matter in the upcoming months.
The most significant implication of this decision is that it opens a new path for federal registrations for businesses that choose to market their product or service names alongside their domain names, as Booking.com has done. It will be crucial for businesses looking to register marks like The most significant implication of this decision is that it opens a new path for federal registrations for businesses that choose to market their product or service names alongside their domain names, as Booking.com has done. It will be crucial for businesses looking to register marks like Booking.com to keep this decision's holding in mind when determining whether their mark plus ".com" will now be eligible for registration based upon acquired distinction.
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