High Court References Consumer Perception In Big Trademark Case

Writing in SCOTUSblog, Jessica Litman analyzes the Supreme Court’s Booking.com decision. When  Booking.com, a travel company, tried to register its domain name as a mark for hotel reservation services, the U.S. PTO denied, referencing a longstanding policy that combining a generic term for goods and services with the .com suffix doesn’t create a protectable trademark. The appellant conceded that the word “booking” was generic for its services, but argued that combining it with .com generated a descriptive term, and that the test for whether a word or symbol is generic is whether consumers perceive it to be generic. The PTO said that the policies embodied in the trademark statute forbid allowing one competitor to monopolize generic terms, and the fact that it was a domain name made it worse because only one entity at a time can use it. Justice Ruth Bader Ginsburg, writing for an eight-justice majority, credited the district court’s determination that consumers perceived “booking.com” as a brand name, and found that dispositive. She said that whether Booking.com is generic turns on whether the term, taken as a whole, signifies to consumers the class of hotel reservations services, and consumers “do not in fact perceive the term Booking.com that way.” Because “Booking.com is not a generic name to consumers, it is not generic.”