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Consumer Perception of Trademarks is Key to Supreme Court Ruling on Booking.com

Consumer perception of words is a key element in determining whether a trademark is protectable and can be registered, according to the U.S. Supreme Court ruling June 30, 2020. The Court held that the name “Booking.com” is entitled to registration at the U.S. Patent and Trademark Office (PTO) because adding “.com” to the generic word “booking” creates enough recognition among consumers that the entire term refers to a particular company, and not merely any entity that might offer hotel booking services on the internet. Generally, generic terms are not protectable as trademarks under the theory that anyone should be able to use a word that is the generic identifier of what they are offering, such as booking reservations. As Justice Ruth Bader Ginsburg explained in her 8-1 majority opinion about why the entire phrase booking.com is not generic, “if ‘Booking.com’ were generic, we … would 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.” The PTO practice previously had been, and the PTO asserted in this case, that combining a generic term with a top level domain name, such as .com, could almost never change the nature of the entire phrase to be protectable. Justice Ginsburg focused on the established concept that analysis of whether a trademark is protectable, or likely to be confused with other trademarks, is based on consumer perception and what consumers of that product understand a certain term to mean. In this case, the evidence accepted by the lower court was clear that consumers understood the name “Booking.com” relates to a specific company, and is not a generic term of a class of services. The conclusion was that consumers understand that the word “booking” is generic and unprotectable, but “Booking.com” is different. The Court’s decision, United States Patent and Trademark Office et al. v. Booking.com B.V., confirms that trademark analysis of protectability and registerability is not always a rigid test, but requires an understanding of how consumers view the particular mark used for the particular goods and services in the marketplace. The Court’s ruling does not mean all generic terms followed by.com are protectable, but rather they are protectable when it is clear consumers see that entire phrase as having acquired distinctiveness, also called “secondary meaning” and points to a particular purveyor.

In a related case, the Supreme Court on July 2, 2020, sent back to the Fourth Circuit Court the issue of whether the PTO could collect its attorneys’ fees from the case based on a process that allows the PTO to collect its “expenses” when its decision is appealed outside of the PTO process.

An historical footnote to this case is that for the first time, due to COVID-19 restrictions, the oral arguments in front of the Supreme Court were conducted by telephone and broadcast on the internet, rather than being in-person and unrecorded.

Ned T. Himmelrich
410-576-4171 • nhimmelrich@gfrlaw.com