• by Wendy Davis  @wendyndavis, June 30, 2020

Online reservation service Booking.com is entitled to trademark its name, although the word “booking” is generic, the Supreme Court ruled Tuesday.

In an 8-1 decision authored by Justice Ruth Bader Ginsburg, the court held that a generic word followed by dot-com can serve as a trademark, if consumers view the term as a brand name. The decision rejected the U.S. Patent and Trade Office's argument that a general word like “booking” followed by dot-com should never receive trademark protection.

“Whether any given 'generic.com' term is generic, we hold, depends on whether consumers in fact perceive that term as the name of a class or, instead, as a term capable of dis­tinguishing among members of the class,” Ginsburg wrote for the majority.

The decision puts an end to a legal battle dating to 2016, when Booking.com sued the Patent and Trademark Office over its refusal to issue a trademark.

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

Among other reasons, she noted that nearly 75% of consumers recognize Booking.com as a brand, not a generic service.

The patent office appealed to the 4th Circuit Court of Appeals, which upheld Brinkema's ruling. The appellate court said the patent office failed to prove that consumers think “booking.com” refers in general to online hotel reservation services.

The agency then asked the Supreme Court to invalidate that decision, arguing that awarding a trademark to a generic word plus “.com” would harm competition by allowing companies “to monopolize language.”

The Supreme Court Tuesday rejected that argument, noting that the agency had itself approved some generic dot-com trademarks in the past -- such as for Art.com and Dating.com

“Whether 'Booking.com' is generic turns on whether that term, taken as a whole, signifies to consumers the class of online hotel-reservation services,” Ginsburg wrote. “Thus, if 'Booking.com' were generic, we might expect consumers to understand Travelocity -- another such service -- to be a 'Booking.com.' We might similarly expect that a consumer, searching for a trusted source of online hotel-reservation services, could ask a frequent traveler to name her favorite 'Booking.com' provider.”

Ginsburg also noted that adding “.com” to a generic term can create an association with a particular website, given that “only one entity can occupy a particular Internet domain name at a time.”

She added: “Consumers could understand a given 'generic.com' term to describe the corresponding website or to identify the website’s proprietor.”

Justice Stephen Breyer dissented from the ruling.

“I fear that to­day’s decision will lead to a proliferation of 'generic.com' marks, granting their owners a monopoly over a zone of use­ful, easy-to-remember domains,” he wrote. “This result would tend to inhibit, rather than to promote, free competition in online commerce.”