Booking.com and genericness

Joel MacMull of Mandelbaum Salsburg
My partner Joel MacMull and I have spent a lot of time thinking, speaking about and litigating the issue of genericness. Here’s his short take on the upcoming Supreme Court consideration of the Booking.com matter, first blogged here in 2017. — RDC

The U.S. Supreme Court announced earlier this month that it will hear the Booking.com trademark case in the new year. Booking.com BV, owner of the popular hotel reservation website, has long argued that the addition of “.com” converts its otherwise generic mark into a protectable trademark, i.e., a source identifier that consumers would recognize.

Joel MacMull
Joel MacMull

While the Trademark Trial and Appeal Board initially refused registration of BOOKING.COM on the ground that it was generic, a federal court later ruled that the addition of “.com” could convert a generic term into a protectable mark. The Fourth Circuit affirmed.

Bullocks!, says the USPTO. The government contends that if left undisturbed, the decision stands to give rise to anticompetitive effects by hindering competition through the registration of domain names bearing generic terms for goods or services. (Query whether there are any generic domain names even worth registering these days?) The government argues, correctly in my view, that federal courts have largely been uniform in rejecting other similar applied-for marks, including hotels.com [blogged here! — RDC], mattress.com and lawyers.com.

The resolution by the Supreme Court of the Booking.com appeal will mark the first time since Park N’ Fly, Inc. in 1985 that the Supreme Court will hear a trademark case wherein the issue of genericness will take center stage. Needless to say, I’ll be “booking” my ticket for this one with the hope that the decision clarifies the recent judicial trend of expanding trademark rights where they clearly don’t, or at least shouldn’t, exist.

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