A US appeals court has handed down a decision in a lawsuit between the hotel-booking service Booking.com and the US Patent and Trademark Office (USPTO). Booking.com has been trying to register its name as a trademark since 2012, but USPTO was against it. According to US law, a trademark cannot be registered if it generically describes the product or service offered. According to Domain Incite, this basically means that it is impossible to register “Beer” as a brand of beer or “Shoes” as a brand of shoes, for example, though you might be able to register “Beer” as a brand of shoes or “Shoes” as a brand of beer.
USPTO representatives insist that “booking” is a generic word, hence Booking.com cannot be trademarked. Over the last six years the case has been taken to various courts, and the appeals court’s ruling would be final. The opinions were divided, but two of the three judges ruled in favor of Booking.com. The ruling reads that this was a rare case where adding the top-level domain (a “TLD”) .com to a generic second-level domain (an “SLD”) like “booking” resulted in a unique composite that could be registered by USPTO as a trademark. A survey that showed that almost three quarters of consumers understood “Booking.com” to be a brand name, rather than a generic term to describe hotel-booking websites, was an influential piece of evidence. The court also ruled that the registration of this trademark will not affect the registration of other domain names with the word “booking” such as carbooking.com and flightbooking.com.
Judge James Wynn who opposed the ruling said that registering Booking.com as a trademark created a dangerous legal precedent that could enable Booking.com to sue other websites that have “booking” in their names.
