Booking Holdings has won a legal case that made its way to
the U.S. Supreme Court over recognition of the name “Booking.com” 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 Booking.com
can now be registered as a brand name.
Justice Ruth Bader Ginsberg in the ruling wrote: “Under
these principles, whether Booking.com is generic turns on whether that term,
taken as a whole, signifies to consumers the class of online hotel-reservation
services.
“Thus, if Booking.com were generic, we might expect
consumers to understand Travelocity -- another such service -- to be a ‘Booking.com.’
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 ‘Booking.com’ provider.”
The court determined that consumers “do not in fact perceive
the term ‘Booking.com’ 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
generic.com domains who have built up enough goodwill in their marks are often
sophisticated enough to understand that rights in descriptive marks are
somewhat limited.”
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Source: PhocusWire