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No Bar In Registering Generic URLs As Trademark: SCOTUS Permits Registration Of 'Booking.Com' Trademark [Read Judgment]

LIVELAW NEWS NETWORK
1 July 2020 10:54 AM GMT
No Bar In Registering Generic URLs As Trademark: SCOTUS Permits Registration Of

"Because “Booking.com” is not a generic name to consumers, it is not generic."

The Supreme Court of the United States has held that there is no bar in registering generic URLs as trademarks.

The majority (8:1) held 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.

Booking.com is a digital travel company that provides hotel reservations and other services under the brand "Booking.com" U. S. Patent and Trademark Office (PTO) refused registration of "Booking.com" stating that it is a generic name for online hotel-reservation services. A generic name—the name of a class of products or services—is ineligible for federal trademark registration. In this case, Patent and Trademark Office v. Booking.com B. V. , the PTO challenged the orders of District Court and Court of Appeals finding that "booking.com" unlike the term "booking" standing alone—is not generic.

The court observed that "Booking.com" is not a generic name to consumers and thus it is not generic. Justice Ginsburg, authored the opinion of the Court and observed:

"Whether "Booking.com" is generic turns on whether that term, taken as a whole, signifies to consumers the class of online hotel-reservation services. 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. Consumers do not in fact perceive the term "Booking.com" that way."

The Court, however, clarified that, whether any given "generic.com" term is generic 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.

The PTO contention was that, as a rule, combining a generic term with ".com" yields a generic composite. The Court said that adopting such a rule would largely disallow registration of "generic.com" terms and open the door to cancellation of scores of currently registered marks.

The sole dissenting Judge dissented with the Court's opinion opining that granting trademark protection to "generic.com" marks threatens serious anti competitive consequences in the online marketplace. He said:

The term "Booking.com" refers to an internet dissenting booking service, which is the generic product that respondent and its competitors sell. No more and no less. The same is true of "generic.com" terms more generally. By making such terms eligible for trademark protection, 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. This result would tend to inhibit, rather than to promote, free competition in online commerce. I respectfully dissent.
Case name: Patent and Trademark Office v. Booking.com B. V.

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