Booking.com recognised as a trademark in the US
Important ruling in long-running case
Booking.com is allowed to register its name as a trademark in the US, after the Dutch booking service provider's dispute with the United States Patent and Trademark Office (USPTO) was settled by the US Supreme Court. The court ruled that a generic term combined with a domain name extension can be a trademark. The rationale being that, in the Domain Name System, a domain name is exclusive to a particular registrant.
When is a domain name registerable as a trademark?
Internet extension is integral part of the trademark
It's a case with major implications for many internet-based operations, because consumers often firmly associate generic-term-plus-extension combinations with particular companies. That's the case with bol.com, amazon.com and nu.nl, for example. But when does such a combination become a trademark? In the US, at least, the answer to that question is now clearer.
Long-running dispute
As I wrote in a previous blog, Booking.com and the USPTO have been at loggerheads since 2016. The booking service provider wanted to register its name as a trademark, but the USPTO refused to accept the registration. The firm therefore took the case to court, presenting research that showed 75 per cent of US internet users associated 'booking.com' with a specific company. In response, the USPTO pointed to the rules on legal form designations: the addition of such a designation to a non-distinctive name is not considered to render the combination distinctive. So, if Amazon is not a trademark, Amazon Inc. cannot be one either.
Domain names are by definition unique
The Supreme Court accepted Booking.com's argument, partly because a domain name, unlike a combination of generic term plus legal form, is by definition unique. There can only be one Booking.com, whereas there can theoretically be multiple entities called Johnson Inc. The situation would be different, however, if consumers associated a domain name with a generic group of domain names.
Scope of protection is limited
So, what has Booking.com gained by winning the case? Well, the company is better placed to take action against anyone who uses its name, but only if they use exactly the same name. The word 'booking' remains a generic term. It's therefore unlikely that any other company that uses a name based on that generic term, such as ebooking.com, will be required to stop doing so, or to surrender the associated domain name. And use of the word 'booking' without the .com extension is still entirely permissible.
The full judgement is available from the Supreme Court's website.
