Looking inside a Supreme Court trademark case

On Behalf of | Nov 23, 2020 | Trademarks |

There’s an old saying that the only things you can be certain of are death and taxes. Maybe the saying should be amended to add the U.S. Supreme Court. Despite the unprecedented turmoil of 2020, the court continues to quietly, steadily do its job.

Let’s take a look at a recent trademark that was before the court.

USPTO v. Booking.com

The genesis of the Booking.com case is in the United States Patent and Trademark Office’s refusal to register trademarks applied for by the online travel reservations site.

The USPTO said its refusal was because “Booking.com” is a generic term that describes online reservation services and that it does not identify a particular source of those services. Generic terms cannot be protected by trademarks.

The USPTO’s position is that combining a generic word (in this particular case, it’s “booking”) with “.com” results in a generic mark.

The sum of the parts

The Supreme Court disagreed, stating that the mark must be considered in its entirety rather than separated into pieces. The question then is whether the meaning of the term – Booking.com – is generic to consumers.

The SCOTUS added that when courts try to determine the meaning of terms to consumers, it’s acceptable for those courts to examine dictionaries, consumer surveys and common usage to understand how consumers view a particular term.

The survey says . . .

The U.S. Court of Appeals for the Fourth Circuit had considered a submitted survey that found that 75 percent of consumers recognize “Booking.com” as a brand. The court reasoned that because consumers don’t consider the term generic, it’s not generic.

The USPTO had argued that approving the trademark would prevent competitors from using similar terms (ebooking.com, for instance) for their reservations businesses. The court stated that the owner of a relatively weak trademark – Booking.com has conceded it’ll be a weak mark – will be less likely to establish the needed likelihood of consumer confusion in an infringement case.

Looking ahead

The Supreme Court’s affirmation of the Court of Appeals’ judgment paves the way for future trademark protections for other “generic” business names.

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