Booking Holdings wins trademark Supreme Court case

US: Booking Holdings, which manages travel brands such as Booking.com, Kayak, Agoda and Priceline, has won a legal case in the United States over the naming of its flagship website, Booking.com.

The case, which made its way to the American Supreme Court, asserted that the website’s name referred to a generic service, and could not be trademarked.

Booking Holdings’ trademark was refused by the US Patent and Trademark Office, whose lawyers ruled that generic terms cannot be used as trademarks, even if it has acquired a secondary meaning. The company’s lawyers argued that a lack of trademark protection would lead to copycats and brand dilution.

Justice Ruth Bader Ginsburg wrote in the majority ruling: “Under these principles, whether ‘Booking.com’ is generic turns on whether that term, taken as a whole, signifies to consumers the class of online hotel-reservation services. Thus, if ‘Booking.com’ were generic, we might expect consumers to understand Travelocity – another such service – to be a ‘Booking.com’.

“We might similarly expect that a consumer, searching for a trusted source of online hotel reservation services, could ask a frequent traveller to name her favourite ‘Booking.com’ provider,” she added.

Many believe this ruling will simply confirm the status quo, with generic .com domains having already built a legal framework around existing rights. Others worry that this may lead to a rush in generic applications.

Justice Stephen Breyer wrote in the dissent: “By making such terms eligible for trademark protection, I fear that today’s decision will lead to a proliferation of ‘generic.com’ marks, granting their owners a monopoly over a zone of useful, easy-to-remember domains.”

The case is also notable as it was the first US Supreme Court case to be argued over the phone, in keeping with new social distancing measures. The new remote format shifted the debate from the quick, immediacy of in-person arguments to a more procedural tone, with the chief justice choosing justices to ask and answer questions.