The question of whether a generic term such as “Booking.com” could receive trademark protection arose when United States Trademark and Patent Office (USPTO) rejected the registration of the descriptive term. The USPTO reasoned that the term was too generic and would cause an anti-competitive environment, if monopolistic rights to use the term “Booking.com” were to be awarded.
Booking.com B.V. challenged this decision taken by the USPTO in the District Court. The District Court conducted a survey to ascertain whether the consumers recognised the brand regardless of its descriptive nature. The result showed that 74.8% of the participants recognised “Booking.com” as a brand. The District Court, hence held that the mark had acquired a secondary meaning and therefore should qualify for trademark protection.
The USPTO went in appeal to the US Court of Appeals of the 4th Circuit and further to the Supreme Court. The US Supreme Court, in a sweeping majority judgement of 8:1 pronounced that the District Court was right to hold that “Booking.com” has acquired a secondary meaning among its customers, and hence was a valid trademark. The Court further held that nothing about this registration would hinder the competitors from using the generic term “booking” or “.com” as a part of their own marks as long as it done “fairly and in good faith”.
The dissent opinion was presented by Justice Stephen Breyer who stated that by allowing generic marks to be protected under trademark law, it created a dangerous precedent as exclusive rights to use generic marks creates immense restrictions in that market for its present and future competitors. This decision of the US Supreme Court is in compliance with the objectives of the trademark law, but it does cause difficulty with respect to compliance with US anti-trust laws.
Patent and Trademark Office v. Booking.com B. V., No. 19-46 (U.S. Jun. 30, 2020)