Booking.com Defends Trademark To Supreme Court

Online reservation service Booking.com is urging the Supreme Court to rule that the company is entitled trademark its name, even though the word “booking” is generic.

The web company is asking the Supreme Court to uphold a decision issued last year by the 4th Circuit Court of Appeals, which ruled that Booking.com should be awarded a trademark.

The company contends that the key question isn't whether the word “booking” is generic, but whether customers view the name “booking.com” as a brand. 

“Sometimes the evidence will establish that a Generic.com mark is generic; sometimes not,” Booking.com writes.

The company says in its case, a survey showed nearly 75% of consumers recognize Booking.com as a brand, not a generic service.

Booking.com's new arguments mark the latest development in a battle dating to 2016, when the web company sued the Patent and Trademark Office over its refusal to issue a trademark.

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U.S. District Court Judge Leonie Brinkema in Alexandria, Virginia sided with Booking.com, ruling that even though he word "booking" is generic, adding the top-level domain ".com" entitled the company to trademark protection.

The 4th Circuit upheld that decision last year, writing that the agency had not proven that consumers think “booking.com” refers in general to online hotel reservation services. That ruling appears to conflict with prior decisions issued by the U.S. Circuit Court of Appeals, which said in 2009 that "Hotels.com" and "Mattress.com" can't be trademarked because the words "hotels" and "mattress" are generic.

The trademark agency recently asked the Supreme Court to invalidate the 4th Circuit's decision in favor of Booking.com. Among other arguments, the agency says that awarding a trademark to a generic word plus “.com” would harm competition by allowing companies “to monopolize language.”

The agency argued that trademark protection for generic words followed by “.com” could “preclude competitors from calling their products and services by their common names, thereby diminishing competition and harming consumers.”

But Booking.com counters that web companies need trademarks to protect themselves.

“Trademark protection is ... essential to prevent brick-and-mortar entities from trading on a domain-name mark holder’s goodwill,” Booking.com writes.

The company adds it needs trademark protections “to prevent competitors from opening storefront Booking.com travel agencies, or from diluting its brand by selling Booking.com-themed travel products in airport shops.”

Booking.com adds that trademarks don't prevent other companies from using similar domain names. “Weather.com and Accuweather.com coexist, while Tennis.com and PlayTennis.com share the same turf,” Booking.com argues.

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