US Patent and Trademark Office v. Booking.com B. V.

Case Name: US Patent and Trademark Office v. Booking.com B. V.

Court: United States Supreme Court.

Year: 2020.

Citation: 591 US _ (2020)

Introduction :

A trademark refers to ” a sign capable of distinguishing the goods or services of one enterprise from those of other enterprises.”.¹

To be registered with the United States Patent and Trademark Office, a trademark must be distinctive and used in commerce.However, new legal challenges have emerged as a result of the internet’s evolution, especially with relation to domain names. A new problem arises concerning general phrases and extensions like “.com” are eligible for protection under trademark law. A landmark case USPTO v. Booking.com B.V illustrates that Booking.com is an online travel booking company, filed an application for registration of a trademark.² The U.S. Patent and Trademark Office (“USPTO”) denied the application, arguing that both “booking” and “.com” are general elements.According to the USPTO, combining two general elements does not create a distinctive trademark.³

The Supreme Court was faced with a basic trademark law issue in this case: Despite the Lanham Act’s ban on general phrases as trademarks, does a company’s addition of a generic top-level domain (“.com”) to an otherwise general name result in a trademark that may be protected ?.⁴

Fact:

The dispute is between the plaintiff booking.com.B.V, travel reservation web-site and U.S patent and trademark Office (USPTO), a federal agency responsible for issuing patents and registering trademarks.⁵

Since 2006, Booking.comhas worked under its brand name “Booking.Com.” wanted to file application for registration to the USPTO⁶.

However, because “Booking.Com” was a general name, the PTO dismissed Booking.com’s demands, finding that the marks were not protected.

It supported its ruling by citing the Lanham Act⁷, which states that general phrases are not distinctive and that marks must be “distinctive” in order to qualify for protection.

Additionally, “descriptive” terms that have acquired secondary meaning are protected by the Lanham Act, that is, a consumer’s mental association between the proposed mark and the origin of the commodity or service is safeguarded. Rather, the USPTO determined that Booking.com failed to demonstrate that the marks had acquired secondary significance.

As a result, the company appealed to the Trademark Trial and Appeal Board⁸, which affirmed the USPTO’s ruling.⁹

Booking.com appealed to the United States District Court for the Eastern District of Virginia¹⁰for a second ruling. The District Court agreed with Booking.com, noting that people recognize “Booking.com” as a brand name, not just a general name. So USPTO took the case to the Fourth Circuit Court of Appeals, which shared the same decision.

Last but not least, the USPTO filed an appeal with the US Supreme Court, stating that a general name shouldn’ t be considered a trademark because it ends with “.com”.¹¹

Legal Issues:

The issue was concerned with whether generic phrase and generic top-level domain combination eligible to be protected under Lanham Act.

This issue showed the limitation of Lanham Act of applied domain names and helped define what constitutes a distinguishing mark in the digital age.

Court’s Decision:

According to OYEZ (2020), In an 8-1 judgment, the court upheld the 4th Circuit’s decision that if consumers do not identify a “generic.com” phrase as general, it is not an authorized name for a class of products or services. “general.com” qualifies for federal trademark registration under those conditions.¹²

The court’s opinion was delivered by Justice Ruth Bader Ginsburg. A concurring opinion was submitted by Justice Sonia Sotomayor. However,Stephen Breyer, a justice, dissented.¹³

For Justice Ginsburg:

The parties did not dispute that the word “booking” is a general name for hotel-reservation services. But, the PTO argued that using a general phrase in conjunction with dotcom is also general. Yet, The court denied that consumers see it as a brand and don’t consider “Booking.com” as just a general name. Also, It’s not supported by the last cases. So, it can be protected.¹⁴

Justice Sotomayor filed a concurring opinion. Firstly, consumer surveys may not always be a reliable way to assess if a term is general, and secondly the USPTO found that “Booking.com” is widespread based on usage and dictionary data, but the court was not asked to consider that issue.¹⁵ However, the majority opinion, according to Justice Breyer’s dissenting opinion, was “inconsistent with trademark principles and sound trademark policy.”¹⁶

Legal Reasoning

The Court disagreed with the PTO rule that any generic word with “.com” added is still general. Rather, the Court ruled that we must consider public opinion. As a result, trademark Law depends on consumer Perception. People don’t just identify “Booking.com” with any booking service, they link it with a specific company.

Furthermore, the Court affirmed that the PTO’s per se rule ignores past practice cases and violates the Lanham Act because it neglects the importance of consumer perception. Despite the disagreement of Justice Breyer, the majority underlined that the consumer understanding is what counts most.

Impact of the Case

The Booking.com decision had an impact on trademark law.

Instead of using a per se rule, the Court said we must consider what consumers believe . It can be protected if consumers see it as a brand, even if it includes a generic word and “.com.

Personal Analysis

Personally, I think the court decision has a modern and reasonable approach for various reasons. Firstly, I think that moving away from rigid per se rules toward more flexible rules fits with the digital world disputes.

According to the USPTO per se ruling, If a word is generic (like “booking”), then adding “.com” is still generic too and can’t be protected. Instead, the Supreme Court rejected this strict rule, explaining that the purpose of trademark law is to protect consumers and identify brands. As a result, companies have more chances to protect the names they’ve built their reputation.

However, this rule can have significant risks. I believe that Justice Breyer’s warning is valid because  it can restrict competition and fair use by encouraging companies to seek exclusive rights. This led to more trademark disputes.

Conclusion

The travel booking website Booking.com wants to register “Booking.com” as a trademark.The U.S. Patent and Trademark Office (PTO) denied registration, determining that “Booking.com” was a generic name for online hotel-reservation services.¹⁷

However,the Supreme Court Uphold in Favor of the company explaining the importance of consumer perception in determining whether a term is generic under the Lanham Act.

By turning the focus from strict categorical criteria to a consumer-centric approach, the Booking.com ruling marks a significant advancement in trademark law.

University of Carthage

Reference(S):

1. World Intell. Prop. Organisation, What is a Trademark?, https://www.wipo.int/trademarks/en
2. Oyez, U.S. Patent and Trademark Office v. Booking.com B.V.,https://www.oyez.org/cases/2019/19-46.
3. Ballotpedia, United States Patent and Trademark Office v. Booking.com B.V., https://ballotpedia.org/United_States_Patent_and_Trademark_Office_v._Booking.com_B.V
4. Casetext, United States Patent and Trademark Office v. Booking.com B.V., 591 U.S. (2020), https://casetext.com/case/patent-and-trademark-office-v-bookingcom-b-v.
5. Laura A. Heymann, United States Patent and Trademark Office v. Booking.com B.V.: How Do We Know When Something Is a Name?, Popular Media, William & Mary Law School Scholarship Repository (July 2, 2020), https://scholarship.law.wm.edu/popular_media/513.
6. Irah H. Donner, Supreme Court: Generic Word Combined With ‘.com’ Held Trademark Eligible, Manatt, Phelps & Phillips, LLP, Intellectual Property Law Newsletter (Aug. 25, 2020), https://www.manatt.com/insights/newsletters/intellectual-property-law/supreme-court-generic-w ord-combined-with-%E2%80%98-com%E2%80%99-he.
7. Justia , United States Patent and Trademark Office v. Booking.com B.V., 591 U.S. (2020), https://supreme.justia.com/cases/federal/us/591/19-46/.

¹ See What is a Trademark?, World Intell. Prop. Org., https://www.wipo.int/trademarks/en (last visited May 18, 2025).

² Oyez, U.S. Patent and Trademark Office v. Booking.com B.V., https://www.oyez.org/cases/2019/19-46

³ Casetext, United States Patent and Trademark Office v. Booking.com B.V.,https://casetext.com/case/patent-and-trademark-office-v-bookingcom-b-v

4Ibid.

⁵ U.S. Patent and Trademark Office. (2024). U.S. Patent and Trademark Office. USA.gov.https://www.usa.gov/agencies/u-s-patent-and-trademark-office

⁶ supra note 2

⁷ The Lanham Act was enacted by Congress in 1946. The Act provides for a national system of trademark registration and protects the owner of a federally registered mark against the use of similar marks. Lanham Act, 15 U.S.C. §§ 1051 et seq. (1946), available at https://www.law.cornell.edu/uscode/text/15/chapter-22.

⁸ The Trademark Trial and Appeal Board (TTAB) handles appeals involving applications to register marks, appeals from expungement or reexamination proceedings involving registrations, and trial cases of various types involving applications or registrations. https://www.usa.gov/agencies/u-s-patent-and-trademark-office (last visited May 19, 2025).

⁹supra note 2.

¹⁰ U.S. District Court for the Eastern District of Virginia, About the Court, https://www.vaed.uscourts.gov/about-court (last visited May 19, 2025).

¹¹ United States Patent and Trademark Office v. Booking.com B.V., Ballotpedia,https://ballotpedia.org/United_States_Patent_and_Trademark_Office_v._Booking.com_B.V.

¹² Supra Note 1

¹³United States Patent & Trademark Office v. Booking.com B.V., 591 U.S.(2020),

https://casetext.com/case/patent-and-trademark-office-v-bookingcom-b-v.

¹⁴ Laura A. Heymann, United States Patent and Trademark Office v. Booking.com B.V.: “How Do We Know When Something Is a Name?”, Popular Media, Wm. & Mary L. Sch. Scholarship Repository (July 2, 2020), https://scholarship.law.wm.edu/popular_media/513 .

¹⁵ Supra Note 3

¹⁶Irah H. Donner, Supreme Court: Generic Word Combined With ‘.com’ Held Trademark Eligible, Manatt, Phelps & Phillips, LLP, Intellectual Property Law Newsletter (Aug. 25, 2020),https://www.manatt.com/insights/newsletters/intellectual-property-law/supreme-court-generic-word-combined-with-%E2%80%98-com% E2%80%99-he (last visited May 20, 2025).