Booking.com Trademark Would Harm Competition, EFF Tells Supreme Court

• by Wendy Davis  @wendyndavis, January 13, 2020

Siding against Booking.com, the digital rights group Electronic Frontier Foundation is urging the Supreme Court to rule that the online reservation company is not entitled to trademark its name.

The organization argues in a friend-of-the-court brief filed Monday that companies aren't entitled to trademark generic words like “booking” by combining them with generic top-level domains like “.com.”

The watchdog adds that allowing terms like “booking.com” to be trademarked “contravenes the purposes of trademark law to the detriment of consumer rights and competition.”

The EFF is weighing in on a battle between the Patent and Trademark Office and Booking.com dating to 2016, when the web company 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 agency is now appealing that decision to the Supreme Court.

The EFF argues that the 4th Circuit's decision in favor of Booking.com “sets a dangerous precedent that will undermine competition, impede efficient trademark review, and create new litigation risks for small businesses that can ill-afford them.

The organization adds that the lower court ruling exposes other companies that currently use variations of the word “booking” will face new threats.

"There are already a number of other companies with domain names incorporating the same generic root as 'booking.com,' such as 'ebooking.com,' 'bookit.com,' and 'simplybook.com'," the group writes. “These companies would face considerably more risk of liability under the Fourth Circuit’s approach. And they face this risk even though their domain names are not identical to the registered mark; for purposes of trademark liability, all that is required is a likelihood of confusion."