Supreme Court Backs Trademark Rights in Booking.com Victory

(Bloomberg) -- The U.S. Supreme Court bolstered trademark rights for website names, ruling that businesses such as Booking.com can get federal protection for names that center on a commonly used word.

The 8-1 ruling means that Booking.com, owned by Booking Holdings Inc., must be put on a government registry that provides nationwide benefits.

Federal registration gives trademark owners protections on top of the rights they already have under state law. Registration can confer exclusive rights in parts of the country where no one was already using the name or image, help owners win lawsuits, and put would-be competitors on notice that a trademark is legally protected.

The Trump administration contended “booking” is a generic term that doesn’t qualify for registration even if “.com” is added at the end. Under federal trademark law, generic terms are those that don’t distinguish a product or service from others on the market.

Writing for the court, Justice Ruth Bader Ginsburg rejected the government’s categorical approach, saying the key question is how consumers view a name.

“Because ‘Booking.com’ is not a generic name to consumers, it is not generic,” Ginsburg said. Justice Stephen Breyer dissented.

The company said consumers have come to identify Booking.com as a brand that provides valuable reservation services. The company argued that the rejection of its registration applications would put consumers at risk of being misled.

Booking shares were down 0.6% at 11:27 a.m. in New York.

The case is U.S. Patent and Trademark Office v. Booking.com, 19-46.

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