On Tuesday, the US Supreme Court issued an unusual ruling on the status of website names, deciding that “Booking.com” is eligible for a federal trademark even though it’s based on a generic term. Bloomberg reports that the 8-1 decision gives Booking.com, owned by Booking Holdings Inc., nationwide legal protection against competing trademarks.
“We have no cause to deny Booking.com the same benefits Congress accorded other marks qualifying as nongeneric,” Justice Ruth Bader Ginsburg wrote.
The United States Patent and Trademark Office had previously denied Booking.com’s trademark application because it believed the name to be generic, even with the “.com” addition. However, the Supreme Court overturned that decision, reasoning that it was important to consider how consumers view a name like Booking.com. “Because ‘Booking.com’ is not a generic name to consumers, it is not generic,” wrote Ginsburg.
US trademark law doesn’t allow a company to claim ownership to the name of an entire category of goods, like “cars” or “computers,” as that would give it an unfair advantage over its competitors, Reuters notes. But Booking.com argued that it needed to be able to trademark its name to stop consumers from being misled by copycats. Booking.com’s lawyer David Bernstein said the decision was “a victory for countless brand owners that have invested significant resources in building their brands - such as Weather.com, Law.com, Wine.com and Hotels.com.”
Justice Stephen Breyer, the lone vote in dissent, argued that the decision could lead to a rush of generic trademarks that could stifle competition. “The term “Booking.com” refers to an internet booking service, which is the generic product that respondent and its competitors sell. No more and no less,” wrote Breyer. “By making such terms eligible for trademark protection, I fear that today’s decision will lead to a proliferation of “generic.com” marks, granting their owners a monopoly over a zone of useful, easy-to-remember domains.”
The Booking.com case was the first time the Supreme Court conducted oral argument over the phone, necessitated by the COVID-19 pandemic.