Supreme Court to Decide Landmark Trademark Case in 2020

By Marissa Gibbens.In its 2020 cycle, the Supreme Court will review the 4th Circuit Court of Appeals’ decision in United States Patent and Trademark Office v. Booking.com B.V. The Court will decide whether the addition of the term “.com” can turn a generic term (such as the term, “booking”) into a protectable trademark.

The company Booking.com B.V. runs online hotel reservation services which most people recognize as “Booking.com.” In 2012, Booking.com B.V. went to the United States Patent and Trademark Office intending to register “Booking.com” as a U.S. trademark. The company had just registered “Booking.com” as an international trademark in 2011. USPTO, reasoning that the term “Booking.com” was too generic, did not grant the registration, however. Generic terms cannot be registered as trademarks under the Lanham Act, also known as the Trademark Act of 1946.

The USPTO’s decision to reject Booking.com’s registration was affirmed by the Trademark Trial and Appeal Board. However, the U.S. District Court for the Eastern District of Virginia conversely determined that there was enough evidence to show that “Booking.com” was a descriptive term (and not a generic term). The 4th Circuit later affirmed the district court’s decision, finding that USPTO did not meet its burden of showing that “Booking.com” was a generic term. The 4th Circuit did acknowledge that the word, “booking,” by itself is a generic term.

Now the Supreme Court must decide whether the term “Booking.com” is a generic term (not entitled to registration as a U.S. trademark) or a descriptive term (entitled to registration as a U.S. trademark). In its decision, the Court must decide whether adding “.com” to a generic term (such as “booking”) can turn that term into a protectable trademark under U.S. trademark law. Previous 9th Circuit and Federal Circuit decisions have held that “.com” has no such transformative power when it comes to generic terms. Those 9th Circuit and Federal Circuit decisions were distinguished by the 4th Circuit in United States Patent and Trademark Office (USPTO) v. Booking.com B.V.

USPTO’s main concern in allowing Booking.com B.V. to trademark “Booking.com” is that other businesses which provide reservation services will be prohibited from including the word “booking” in their business names. The USPTO is afraid that granting the Booking.com trademark might limit industry competition. Although the USPTO’s arguments have some merit, the Court should not rule in USPTO’s favor. Companies like Booking.com B.V. have built their brands and established goodwill with their customers by using their website names as advertising tools. It would be unfair to prevent Booking.com B.V. from registering “Booking.com” as a trademark. Indeed, companies should not be prohibited from attaining trademarks simply because they come up with smart marketing strategies. Quashing the ability for companies to register their website names (which may contain some generic terms) as U.S. trademarks would quash the ability of large and small companies alike to develop and maintain customer goodwill in today’s internet-centric world. Hopefully the court will consider these arguments when coming to its decision later this year.

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Marissa Gibbens

J.D. Candidate, 2021

Marissa is a Pedrick Scholar and actively involved in Moot Court. While in law school, Marissa has volunteered with the Women Law Students’ Association, interned at the U.S. Attorney’s Office, and participated in the Sustainability Mentorship Program. Marissa plans to practice Civil Litigation after she graduates in 2021.

The opinions expressed herein are those of the individual contributors to the ASLJ Blog and should not be construed as the opinions of the Arizona State Law Journal or the Sandra Day O’Connor College of Law at Arizona State University.