Eating Your Cake

On May 5, 2020, the United States Supreme Court had its first teleconference oral argument in history.[1] It was a trademark case.[2] Here’s what went down.

Booking.com built a business on owning a domain that’s the generic word for their services. That has earned them a very strong position in their industry but has left them with essentially no trademark rights and no U.S. trademark registration. Booking.com is now trying to change established trademark law so they can eat their cake and have it, too.

Booking.com concedes that BOOKING is generic for what they do but argues that BOOKING.COM is not generic.[3] It’s possible for a domain name to create a different commercial impression than the domain alone. For example, TENNIS.NET for tennis equipment isn’t generic because of the play on words. BOOKING.COM doesn’t meet that standard.

Why do we care if they register BOOKING.COM?

Trademark law prevents companies from monopolizing language: You can’t give exclusive rights to the word “booking” to one booking company because then other booking companies won’t be able to describe what they do.

Booking.com B.V. argued that they don’t plan to use the registration to go after competitors like ebooking.com or hotelbooking.com. They said they need the registration to go after spoofers and cyberscammers.

First, I don’t believe Booking.com won’t use the registration to attack competitors.

More importantly, they have reaped the benefits of choosing a generic word for their brand. There’s no reason we should sacrifice fair competition to save them from the disadvantages inherent in their choice.

 

Thanks to Cassandra for suggesting this post.

 

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[1] The case was United States Patent and Trademark Office v. Booking.com. B.V.  The absence of the august chamber and the physical presence of the justices resulted in one tiny slip in the formality shown by the attorney for the USPTO:

Mr. Chief Justice Roberts: “Ms. Ross, why don’t you take a minute to wrap up.”

Erica Ross: “Sure. Uh. Thank you Mr. Chief Justice.”

[2] The case concerns four applications to register trademarks containing BOOKING.COM filed by Booking.com B.V. The examining attorney at the Trademark Office refused registration because the term “booking” was generic for hotel reservation services and merely adding the generic top-level domain “.com” did not change a generic word to a protectable trademark.

[3] That said, the general rule is included in the Trademark Manual of Examination Procedure Section 1215.05:

“Generally, a mark comprised of a generic term(s) combined with a non-source-identifying gTLD is generic and without trademark or service mark significance. In re 1800Mattress.com IP LLC, 586 F.3d 1359, 92 USPQ2d 1682 (Fed. Cir. 2009) (MATTRESS.COM generic for “online retail store services in the field of mattresses, beds, and bedding”); In re Hotels.com, L.P., 573 F.3d 1300, 91 USPQ2d 1532 (Fed. Cir. 2009) (HOTELS.COM generic for “providing information for others about temporary lodging; travel agency services, namely, making reservations and bookings for temporary lodging for others by means of telephone and the global computer network”).”

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