Booking.com shouldn’t be allowed to register its name as a trademark because the term can’t be protected, a federal agency told the U.S. Supreme Court.
The U.S. Patent and Trademark Office has petitioned the high court to reverse a decision by the U.S. Court of Appeals for the Fourth Circuit that Booking.com can be a valid mark because surveyed customers identify the term as a brand name.
The Supreme Court, if it takes the case, would have the chance to clarify the extent to which top-level domains such as .com and .net can transform ordinary words into protectable trademarks.
Generic names that simply refer to a product aren’t entitled to trademark protection. Descriptive marks that describe a product’s characteristics may be protectable if the public associates them with specific sources.
The Fourth Circuit held that the mark isn’t generic, even though “booking” on its own is, in a decision that appears to conflict with two other appeals courts that have ruled against companies trying to register marks including hotels.com, mattress.com, and advertising.com.
Booking.com was rejected as a trademark by an examiner and the Trademark Trial and Appeal Board.
But the U.S. District Court for the Eastern District of Virginia found the trademark can be valid. The Fourth Circuit affirmed, ruling that Booking.com was descriptive because the relevant public had come to recognize the booking service, Booking.com BV, as the mark’s source.
The PTO said in its Aug. 21 filing that the appeals court mistakenly extended the test for determining if descriptive marks are protectable to generic marks.
“That approach effectively eliminates the established distinction between generic and descriptive terms,” it said.
The PTO also said the Fourth Circuit’s ruling, if allowed to stand, would encourage companies to sue competitors for trademark infringement simply for using the same generic terms for goods and services in their domain names.
Booking.com BV, in an Aug. 7 filing, said the PTO is essentially asking the court to “create a new rule at odds with settled precedent.”
No court has held that a mark comprising an allegedly generic term and a top-level domain is generic as a matter of law, it said.
The U.S. solicitor general is representing the PTO. Foley & Lardner LLP, counsel for Booking.com, declined to comment on the PTO’s latest filing.
The case is USPTO v. Booking.com BV, U.S., No. 19-46, reply brief filed 8/21/19.