Posts Tagged: "Booking.com"

Trademark law has seen substantial developments in 2019 and 2020, with four major cases in the United States and Europe rising to the top. The U.S. Supreme Court (SCOTUS) issued two of those decisions, the most recent being especially significant because the court has not opined on the topic of trademark genericism in nearly 100 years. The other SCOTUS case dealt with the hotly contested topic of awarding profits obtained through innocent (unknowing) trademark infringement.

Following the widely discussed BOOKING.COM Supreme Court genericness case, the Trademark Trial and Appeal Board (Board) took up a genericness case of its own. Int’l. Dairy et al. v. Interprofessionnel du Gruy?re addresses whether a geographic certification mark for GRUYERE is generic for cheese or eligible for registration as a certification mark. In addition to providing an extensive roadmap for how to prove a genericness claim, the case may also be of interest to food and beverage industry applicants seeking to obtain and enforce certification marks.

At a time when small businesses are reeling, the Supreme Court decided to make life even more challenging for startups and mom and pop shops. The Court recently decided that a generic term combined with “.com” or “.net” could be registered as a federal trademark. If that sounds like no big deal to you, you have not thought it through. Based on the Court’s decision in United States Patent and Trademark Office et al. v. Booking.com, someone could register a trademark for autorepair.com. That would mean that Joe of Joe’s Auto Repair would have to get permission, and likely pay a licensing fee, to use the name Joe’s Auto Repair on his website and marketing materials. Multiply that by thousands of other generic business categories and the reality becomes clear.

On Tuesday, June 30, the U.S. Supreme Court affirmed the Fourth Circuit’s holding that BOOKING.COM is a protectable trademark. The U.S. Patent and Trademark Office (USPTO) had refused registration of Booking.com’s housemark, finding that the mark was generic—in other words, a term that consumers understand as primarily the common or class name for the underlying services. The specific issue before the Court was “[w]hether the addition by an online business of a generic top-level domain (“.com”) to an otherwise generic term can create a protectable trademark.” The Court ultimately sided with the popular online travel company Booking.com in an 8-1 decision, holding that “[a] term styled ‘generic.com’ is a generic name for a class of goods or services only if the term has that meaning to consumers.” The ruling paves the way for the registration of “generic.com” terms upon a showing of acquired distinctiveness—but obtaining such registrations will not be easy, or cheap.

The U.S. Supreme Court has sided with Booking.com, ruling that a generic term paired with .com “is a generic name for a class of goods or services only if the term has that meaning to consumers.” The opinion was delivered by Justice Ginsburg and joined by eight members of the Court, with Justice Breyer dissenting and Justice Sotomayor filing a separate concurring opinion. In the Booking.com case, the U.S. Patent and Trademark Office (USPTO) was urging the High Court to reverse a judgment of the U.S. Court of Appeals for the Fourth Circuit that held BOOKING.COM to be a registrable trademark. But the Supreme Court ultimately found that the genericness analysis should turn on consumer perception, rather than a “per se rule” against trademark protection for a generic.com term.

The U.S. Supreme Court heard oral arguments in United States Patent and Trademark Office, et al., v. Booking.com B.V., (Case No. 19-46) yesterday, in the High Court’s first ever telephonic hearing. The United States Patent and Trademark Office (USPTO) urged the Supreme Court to reverse a judgment of the U.S. Court of Appeals for the Fourth Circuit that held BOOKING.COM to be a registrable trademark. The Respondent, Booking.com, argued that the primary significance test, rather than the Federal Circuit’s precedent in Goodyear Co. v. Goodyear Rubber Co., holds the answer to the question of how to distinguish between descriptive and generic names, and under the primary significance test, BOOKING.COM is a registerable trademark.

On March 13, the United States Patent and Trademark Office (USPTO) filed a reply brief urging the Supreme Court on to reverse a judgment of the U.S. Court of Appeals for the Fourth Circuit that held BOOKING.COM to be a registrable trademark. The case was set to be argued on Monday, March 23, but was postponed due to the coronavirus pandemic. Fifteen parties have filed amicus briefs in the case, most of those in support of Booking.com. In response to Booking.com’s brief of February 20, the USPTO primarily argued that, 1) Goodyear Co. v. Goodyear Rubber Co. remains good law and resolves the question presented in the present case, 2) Sound trademark policy supports the conclusion that adding a top-level domain, such as .com, to a generic term does not lead to a protectable trademark, and 3) Booking.com’s survey evidence does not provide a sound basis for treating the term “Booking.com” as a registrable trademark.

As argument nears in the Supreme Court battle between Booking.com and the United States Patent and Trademark Office (USPTO), 12 parties have now filed amicus briefs in support of Booking.com. Among the amici are the Intellectual Property Owners Association (IPO), the International Trademark Association (INTA), and the Survey Scholars and Consultants (SSC).

In November, the U.S. Supreme Court granted a petition for certiorari filed by the U.S. Patent and Trademark Office (USPTO) asking the Court to consider “Whether the addition by an online business of a generic top-level domain (“.com”) to an otherwise generic term can create a protectable trademark.” Booking.com filed its brief for the respondent in the case last week, arguing that “under the Lanham Act, the consumer is king,” and the fact that survey evidence has proven 74.8% of relevant consumers to consider BOOKING.COM a brand, rather than a generic name, “should end this case.”

On November 8, the U.S. Supreme Court granted a Petition for Writ of Certiorari from the U.S. Patent and Trademark Office (USPTO) on the following issue: “Whether the addition by an online business of a generic top-level domain (“.com”) to an otherwise generic term can create a protectable trademark.” The issue stems from Booking.com B.V.’s attempt to register four versions of the trademark “booking.com” for, among other services, “making hotel reservations for others.” The applications, filed in 2011 and 2012, were refused by the USPTO on the grounds that “booking” and “.com” are generic terms which, when combined, nonetheless create a generic term which describes the travel agency and reservation services. In general, generic terms do not function as trade or service marks and cannot be registered.

Priceline has battled back from the dot-com bubble bursting to become the strongest selling stock on the S&P 500 with a market cap of about $66.8 billion. A number of the patents recently issued to Priceline Group companies protect technologies that make it easier to find the travel accommodations people need to enjoy their vacations or pursue their business needs. For example, more accurate search engine results for engines that have to navigate massive datasets to return suggestions to a user is the focus of U.S. Patent No. 8972434, entitled Multi-Phase Search and Presentation for Vertical Search Websites. This patent, assigned to Kayak, discloses a computer program product storing code executable to operate a travel reservation search engine with a query interface module to receive a user search input with a constraint, a constraint evaluation module that can generate queries configured to obtain fewer search results or achieve a quicker response time, and a website query module that executes the multiple queries.