The United States Supreme Court issued a key ruling today that will have far-reaching implications for many companies that conduct business on the Internet. The Court ruled that a generic company name with “.com” added to it would be entitled to trademark protection even though the generic name alone would probably not be entitled to such protection.
In this case, Booking.com, a travel accommodations website, attempted to register “Booking.com” as a trademark. The U.S. Patent and Trademark Office denied this registration on the basis that it is a generic name and thus not eligible for trademark protection. The PTO took this position regardless of whether the name had gained a secondary meaning as it appears that the Booking.com name has done.
Booking.com successfully asserted that this name needed trademark protection to prevent competitors from conducting business under a similar name and to prevent brand dilution. The Court specifically referred to consumer perception as a key factor in this case and said that failure to acknowledge consumer perception is incompatible with a “bedrock principle of the Lanham Act” – that the generic or non-generic character of a particular term depends on its meaning to consumers and how consumers perceive it. In this matter the Court ruled that consumers associated the Booking.com name with a specific website, and thus trademark protection for this website name was appropriate.
As a side note, the oral argument for this case was conducted over the phone due to the COVID-19 pandemic. This was the first Supreme Court oral argument conducted over the phone, but probably won’t be the last. This was an 8-1 decision, with only Justice Breyer dissenting on the basis that allowing trademark protection for generic names is not consistent with sound trademark policies or principles.
You can find a link to the Supreme Court’s opinion here.
If you have any questions, please contact Gunster Technology & Emerging Companies practices leader, Robert White.
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This publication is for general information only. It is not legal advice, and legal counsel should be contacted before any action is taken that might be influenced by this publication.
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