• by Wendy Davis  @wendyndavis, January 7, 2020

Online reservation company Booking.com shouldn't be allowed to monopolize the word “booking” by trademarking its name, the U.S. Patent and Trademark Office is arguing to the Supreme Court.

“Just as no company could federally register 'Booking Company' or 'Booking Inc.' as a trademark, respondent should not be permitted to federally register Booking.com,” the agency says in papers filed Monday.

“Under established trademark law and policy, the addition of '.com' to a generic term does not create a protectable mark,” the agency adds.

The agency is asking the Supreme Court to reverse a ruling issued last year by the 4th Circuit Court of Appeals, which concluded that the website was entitled to trademark its name.

The legal dispute between Booking.com and the agency dates to 2016, when Booking.com sued over the agency's refusal to issue a trademark on the grounds that Booking.com was too generic.

U.S. District Court Judge Leonie Brinkema in Alexandria, Virginia sided with Booking.com, ruling that although 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, writing that the agency had not proven that consumers view the term “booking.com” as referring in general to online hotel reservation services.

The trademark agency is now asking the Supreme Court to invalidate that decision. Among other arguments, the agency says that awarding the web company a trademark would have “significant anticompetitive consequences” by allowing companies “to monopolize language by obtaining the contractual rights to 'generic.com' domain names, and then leveraging those domain names into protected trademarks.”

The agency adds that trademark protection could “preclude competitors from calling their products and services by their common names, thereby diminishing competition and harming consumers.”

The website argued in the past that “overwhelming evidence” established 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.

But the agency counters that the survey results are irrelevant, given that “booking” is generic.

“Just as survey evidence could not transform 'Grain Inc.' into a protectable trademark, it cannot render a 'generic.com' term eligible for federal trademark registration,” the agency writes.

The 4th Circuit's ruling in favor of Booking.com appears to conflict with prior decisions issued by the U.S. Circuit Court of Appeals. That court ruled in 2009 that "Hotels.com" and "Mattress.com" can't be trademarked because the words "hotels" and "mattress" are generic.