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US Supreme Court Holds Booking.com a Distinctive and Registrable Trademark

Client Update / Jul 30, 2020

Article written by Haim Ravia, Dotan Hammer and Adi Shoval

The Supreme Court of the United States ruled that the hotel reservation website Booking.com may register its name as a protected trademark.

The hotel reservation company has been making worldwide use of the Booking.com trademark since 2006. It applied to register the trademark with the US Patent and Trademark Office (the “USPTO”) in 2011. The USPTO denied the application, explaining that the mark is a generic name for hotel reservation services that could not be registered.

The US Lanham Act allows registration of trademarks only when a trademark is distinctive. Generic names cannot be registered as trademarks to prevent an unfair advantage to the trademark applicant.

In its decision, the court held that a “generic.com” term is considered generic for a class of goods or services only where it has that meaning for consumers. Since evidence shows that consumers do not see Booking.com as a generic name for any hotel reservation service, but rather identify it with a specific entity, the term is not generic in these particular circumstances. However, the court clarified the registered Booking.com mark will not yield its owner a monopoly on the term “booking”. This would be a generic term for travel companies. Moreover, because that mark is one of many similarly worded marks, close variations of the mark may also be deemed non-infringing.

CLICK HERE to read the US Supreme Court’s opinion in United States Patents and Trademark Office v. Booking.com

 

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