Originally published by Peggy Keene.
Booking.com Fights USPTO in Court for Registration of Its Brand Name
The United States Patent and Trademark Office has appealed to the Supreme Court after its ruling that Booking.com could not register a trademark for BOOKING.COM. The U.S. Patent and Trademark Office has rejected Booking.com’s application for a trademark based on grounds that the registration was attempting to register generic words, “booking” and “.com”.
Booking.com Battles USPTO for Protection of Its .COM Name
In response to the U.S. Patent and Trademark Office’s refusal to allow the registration, Booking.com argued that its brand is recognizable enough to warrant trademark protection. As trademarks have historically been awarded to protect consumers from brand confusion, Booking.com has also argued that approval of its application for booking.com would be in the public’s best interest as it would prevent others from palming off the goodwill established by its brand.
Other well-known brands such as Salesforce and Home Depot have also filed friends-of-the-court briefs in support of Booking.com. The companies argue that the U.S. Patent and Trademark Office’s stance is too strict and could result in the cancellation or rejection of several worthy trademarks. As such, the companies argue that the trademark applications should be reviewed on a case-by-case basis.
The Internet Commerce Association also filed a friend-of-the-court brief in support of Booking.com, arguing that the U.S. Patent and Trademark Office’s stance could remove vital protection from companies trying to fight domain squatting or fraudulent use of domain names. Specifically, the Internet Commerce Association argues that two of the most common domain name crimes, domain name hijacking and typosquatting, would benefit from the blanket rejection of .com trademark registrations because legitimate brands would have their applications for genuine brands rejected outright.
USPTO Argues Registration of Generic Words With .Com Will Harm Competition
Interestingly, the U.S. Patent and Trademark Office’s arguments seem to take issue more with Booking.com’s attempt to register a generic word with .com as it argues that allowing registration of a generic word combined with .com would harm natural competition between companies by allowing some companies to hold trademarks that could basically monopolizes language necessary for competition.
Despite this, both trial and federal courts of appeal have sided with Booking.com. As such, it would behoove legal counsel and brands alike to follow the trajectory of this case as it awaits word from the Supreme Court.
Key Takeaways From the Booking.com Trademark Battle
The registering of trademarks using .com could have both negative and positive effects because it can:
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protect brands from cybersquatters;
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help consumers avoid confusion;
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award too broad of protection to some brands; and
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have a chilling effect on new trademark registrations.
trademarks
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