US Supreme Court to review Booking.com trade mark dispute

The US Supreme Court will review whether travel fare aggregator Booking.com can register their domain name as a trade mark.

In July this year, the United States Patent and Trademark Office (USPTO) refused permission for the registration of Booking.com’s domain name as a trade mark.

The reasoning for USPTO’s decision was that the terms ‘booking’ and ‘.com’ were ‘too generic’ to be registerable as a trade mark as per the Lehman Act 15 USC 1051.

Booking.com challenged the decision arguing that consumers recognized the domain as a brand rather than an every-day , ‘generic’ term.  The District Court Judge ruled in their favour stating that although the term ‘booking’ could be considered as a generic term, the top-level domain entitled the holiday booking company to trade mark protection.

The decision which was petitioned by the USPTO last Friday, saw the case being brought to the US Supreme Court.

The outcome of the decision will likely set precedent as to whether a US trade mark can provide protection for domain names that are inclusive of a generic terms.

The US Supreme Court is set to make a final ruling by June 2020.