The long-running trademark dispute over the name of market-leading room booking site Booking.com has finally made its way to the US Supreme Court, after the US Patent and Trademark Office (USPTO) successfully petitioned the Court to hear arguments over whether it should be possible to register a trademark for a name or word – in this case, the term “booking” – that might reasonably be seen as being generic.
A USPTO decision in 2016 rejected the site’s application to register a trademark for “Booking.com” on the grounds that the word “booking” was generic and thus incapable of being trademarked. Booking.com subsequently sought, successfully, to reverse that decision in the US District Court, which found that although the word “booking” was indeed generic, the addition of “.com” to it was enough to form the basis of a valid trademark.
The US Court of Appeals rejected the USPTO’s appeal against the District Court’s decision on the basis that, in its view, the USPTO had not shown that the general public did not view “Booking.com” as a generic term referring to all and any room booking sites.
The USPTO, mindful that, in the past, US courts have refused to grant the registering of such proposed trademarks as “Hotels.com”, has now asked the Supreme Court to rule on the matter.