"A Victory for Any Brand Owner That Has Invested to Build a Brand”: Booking.Com and Legal Experts React to Supreme Court Decision

The Supreme Court of the United States issued its decision in USPTO v. Booking.com, ruling that the U.S. Patent and Trademark Office was incorrect in denying a trademark application for ‘Booking.com.’ The USPTO argued that the combination of a generic word and ‘.com’ cannot be trademarked, as it is still a generic word. However, the Supreme Court disagreed. World Trademark Review contacted Finnegan partner Brett Heavner for his thoughts on the case.

Brett said:

The USPTO voiced concern that there would be a flood of applications for purported trademarks consisting solely of combinations of generic terms. However, I suspect that this concern may be a bit overstated. The rule in Booking.com would likely be applied in fairly limited circumstances, namely where such ‘generic term’ marks can only lead to a single source of products. Indeed, the USPTO has already granted registrations for similarly situated marks, such as ART.COM for art print sales and DATING.COM for dating services. Applicants for such marks would still need to prove that the primary significance of the applied-for mark is a source identifier and not a generic term. That remains a fairly significant threshold requirement that would almost certainly rule out basing the application on anything other than ‘use in commerce’ under Section 1(a) of the Lanham Act. And, it is unclear whether, and to what extent, such generic combination marks could make use of the supplemental register.

However, I do think that the decision could open up the register to a select group of similarly situated marks that have become well-known brand names that were previously rejected by the USPTO, such as HOTELS.COM. Further, the flood of applications may also be cut off by the difficulty of gathering convincing evidence of consumer perception. Applicants can always submit survey evidence (and indeed this decision may be a boon to survey experts), but such surveys can be expensive and, as Justice Sotomayor pointed out, are often flawed and unconvincing.

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