The Supreme Court should leave in place a ruling that online hotel reservation service Booking.com is entitled to trademark protection for its name, the company says in papers filed this week.
“The record here confirms that Booking.com is one of the best-known travel and accommodations services in the United States,” the online service writes in papers opposing the U.S. Patent and Trademark Office's request that the Supreme Court review whether Booking.com can trademark its name.
The battle dates to 2016, when Booking.com sued the Patent and Trademark Office over its rejection of the company's request for a trademark. The agency had said the name Booking.com was too generic to be granted trademark protection.
U.S. District Court Judge Leonie Brinkema in Alexandria, Virginia, sided with Booking.com, ruling that even though the word "booking" is generic, adding the top-level domain ".com" entitled the company to trademark protection.
The 4th Circuit Court of Appeals upheld that decision in February, but for slightly different reasons. The appellate judges said the Patent and Trademark Office failed to prove that consumers believe “booking.com” refers in general to online hotel reservation services.
Last month, the Patent and Trademark Office asked the Supreme Court to review the 4th Circuit's ruling. “That decision is contrary to this court’s precedent, which recognizes that the addition of a corporate designation to a generic term does not render the combination non-generic,” attorneys for the Justice Department wrote.
Booking.com counters in its new papers that there was “overwhelming evidence” that consumers view the term Booking.com as a company name. The booking service specifically referenced a survey that it says indicates nearly 75% of consumers recognize Booking.com as a brand, and not a generic service.
The lower court's decision in favor of Booking.com appears to conflict with two rulings issued in 2009 by the U.S. Circuit Court Court of Appeals. That court said "Hotels.com" and "Mattess.com" can't be trademarked because the words "hotels" and "mattress" are generic.