In 2011 and 2012, Booking.com, a digital travel company that allows consumers to make hotel and other reservations online, filed applications to register trademarks with various visual features, all for travel-related services, and all including the term “Booking.com.” See United States Patent & Trademark Office v. Booking.com B. V., No. 19-46, 2020 WL 3518365, at *3 (U.S. June 30, 2020). The trademark examiner at the USPTO, followed by the Trademark Trial and Appeal Board, rejected the applications on the ground that “Booking.com” was a generic term for the services, and was therefore ineligible for registration. According to the board, since “Booking” means making travel reservations and “.com” indicates a commercial website, consumers would necessarily understand “Booking.com” to refer to an online reservation tool for travel, tours, and lodgings. The board further indicated that even if “Booking.com” were descriptive, the term lacked any secondary meaning that would make it registrable.

Booking.com sought review of the board’s decision in the U.S. District Court for the Eastern District of Virginia, allowing it to introduce new evidence concerning consumer perception. See Booking.com B.V. v. Matal, 278 F. Supp. 3d 891, 915 (E.D. Va. 2017). The district court, relying in large part on this new evidence, found that “Booking.com” is not generic. Specifically, the court determined that survey evidence showing “that the consuming public understands BOOKING.COM to be a specific brand, not a generic name for online booking services” indicated that the term was capable of designating source and thus potentially registrable. The Fourth Circuit, on appeal, affirmed the lower court decision and, in June 2020, the Supreme Court affirmed. The court found that whether a “generic.com” term is generic, for the purpose of federal trademark registration, depends on consumer perception of the term. Booking.com, Because “Booking.com” is not perceived by consumers as the name of a class of online hotel-reservation services, but is instead recognized as a term capable of distinguishing between members of the class, the term is not generic, and therefore eligible for federal trademark protection.

Background