The U.S. Supreme Court will review whether
The justices granted the U.S. Patent and Trademark Office’s request for review Nov. 8.
The PTO and Trademark Trial and Appeal Board rejected Booking’s attempt to register a trademark for “Booking.com,” finding it generic. But the U.S. Court of Appeals for the Fourth Circuit reversed, finding a generic word like “Booking” combined with ".com” can receive protection as a descriptive mark if the public perceives it as a non-generic brand name.
The PTO petitioned the high court to reverse the decision, arguing it “effectively eliminates the established distinction between generic and descriptive terms, and the rule that only the latter can become eligible for trademark protection if they become associated in the minds of consumers with a particular brand.” The PTO also said the decision conflicts with Federal Circuit and Ninth Circuit rulings that have held “generic.com” terms unprotectable.
Booking said there was no evidence that “any consumers have ever used the trademark BOOKING.COM as a generic term to describe any class of services (e.g.,'I just logged on to my booking.com;' or ‘Expedia or Travelocity are some of several ‘booking.coms’’),” and that it is “impossible to use BOOKING.COM in a grammatically coherent way to refer generically to anything.”
Booking has separately requested Supreme Court review of the Fourth Circuit’s award of attorneys’ fees to the PTO. The PTO received attorneys’ fees based on a law that requires a trademark applicant to cover “all the expenses of the proceeding” if it appeals a PTO decision to a district court instead of the Federal Circuit regardless of whether the appeal is successful.
Foley & Lardner LLP represents Booking.com.
The case is U.S. Patent & Trademark Office v. Booking.com B.V., U.S., No. 19-46, certiorari granted 11/8/19.