Supreme Court: can trademark its name

Supreme Court: can trademark its name
Photo Credit: Mehdi Kasumov/Shutterstock

Booking Holdings has won a legal case that made its way to the U.S. Supreme Court over recognition of the name “” with trademark authorities.

The travel giant had been refused a trademark of its flagship brand by the U.S. Patent and Trademark Office, which claimed the term was “generic for the services at issue and is therefore unregistrable” due to “booking” being a generic word.

The court on June 30 ruled in favor of Booking Holdings and can now be registered as a brand name.

Justice Ruth Bader Ginsberg in the ruling wrote: “Under these principles, whether is generic turns on whether that term, taken as a whole, signifies to consumers the class of online hotel-reservation services.

“Thus, if were generic, we might expect consumers to understand Travelocity -- another such service -- to be a ‘’ We might similarly expect that a consumer, searching for a trusted source of online hotel reservation services, could ask a frequent traveler to name her favorite ‘’ provider.”

The court determined that consumers “do not in fact perceive the term ‘’ in that way.”

Inevitably, legal opinion has since differed as to what the result of the case means for other travel brands that might be seeking to register generic terms as brand names.

T.J. Mantooth, an intellectual property attorney at Hall Estrill, says: “Trademark eligibility has been turned on its head with the Supreme Court’s support of the primary significance test to determine trademark eligibility.

“A potential race to the courthouse to file a trademark application has been created for any website that can show significance to the relevant consumer.

“This decision may end up being one step forward and two steps backward as the U.S. Trademark Office transitions to evaluating trademark applications based on the primary significance test to determine trademark eligibility.”

However, Fara Sunderji, a partner at the international law firm Dorsey & Whitney, believes the ruling will not trigger an “avalanche of litigation or enforcement actions following a new crop of generic dot-com registrations.”

She adds: “In my opinion, companies lucky enough to own domains who have built up enough goodwill in their marks are often sophisticated enough to understand that rights in descriptive marks are somewhat limited.”

Source: PhocusWire


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