US Patent and Trademark Office v. Booking.com B.V. - Post-Argument SCOTUScast

On May 4, 2020, the U.S. Supreme Court heard argument in United States Patent and Trademark Office v. Booking.com B.V., a case presenting the question whether the addition by an online business of a generic top-level domain (“.com”) to an otherwise generic term can create a protectable trademark.

In 2011 and 2012, Booking.com sought trademark protection for its web address name, “Booking.com”--but the U.S. Patent and Trademark Office (PTO) rejected the application. “Booking” was either generic and not protectable, the PTO stated, or else a descriptive mark to which the addition of “.com” was insufficient to demonstrate the “secondary meaning” necessary for federal protection of a descriptive mark.  Booking.com filed a civil action in federal district court to appeal the PTO rejection and prevailed: the district court held that “Booking.com” as a whole was a descriptive mark that had acquired secondary meaning; that is, it was sufficiently distinctive to establish a mental association in the mind of the relevant public between the proposed mark and the source of the product or service.  The PTO in turn appealed, but a divided panel of the U.S. Court of Appeals for the Fourth Circuit affirmed the judgment of the district court.  The U.S. Supreme Court thereafter granted the PTO’s cert petition to address whether--given that generic terms may not be federally registered as trademarks--the addition by an online business of a generic top-level domain (“.com”) to an otherwise generic term can create a protectable trademark.

To discuss the case, we have Art Gollwitzer, partner at Michael Best & Friedrich LLP and Zvi Rosen, Visiting Scholar and Professorial Lecturer in Law at George Washington University School of Law. 

As always, the Federalist Society takes no particular legal or public policy positions. All opinions expressed are those of the speakers.