Phoning It In for Booking.com: The United States Supreme Court to Hear Trademark Case Telephonically

By Deborah Gubernick and Gabrielle Morlock

The COVID-19 pandemic has upended the way the nation conducts business – at least temporarily, if not permanently. The United States Supreme Court is no exception.  In a fascinating break from tradition, the Court issued a press release April 13, 2020 detailing a number of previously postponed cases for which the Court will hear oral arguments by telephone conference.  Although the Court Building remains open, the Justices themselves and counsel will participate remotely “in keeping with public health guidance in response to COVID-19.” The court, for the first time in history, will also allow live remote access to audio of the arguments.

Among the cases to be heard telephonically is United States Patent and Trademark Office v. Booking.com BV, a trademark case concerning the mark, BOOKING.COM and whether the mark is generic.

Background:  Booking.com applied to register BOOKING.COM as a trademark.  During the trademark application process, the United States Patent and Trademark Office (USPTO) rejected Booking.com BV’s applications for BOOKING.COM on the grounds that “BOOKING” is a generic term for making reservations and essentially adding “.com” does not change the generic nature of the mark. Booking.com requested reconsideration through the Trademark Trial and Appeal Board (TTAB), to no avail. The TTAB affirmed the USPTO’s decision. Booking.com appealed to the District court by filing a lawsuit against the USPTO and the USPTO’s director in the Eastern District of Virginia.  Booking.com argued that the mark is not generic–but is descriptive–and therefore entitled to registration if the mark has acquired secondary meaning. The District Court ruled on summary judgment that although “booking” is a generic term, BOOKING.COM had in fact acquired secondary meaning and is a protectable trademark.

The USPTO appealed on the ground that the District Court erred in finding BOOKING.COM is not generic and is a protectable mark; Booking.com cross-appealed on the grounds that it should not have to pay the USPTO’s attorneys’ fees. Booking.com provided survey results showing that 74.8% of consumers in the travel reservation space recognized Booking.com as a source identifier and not a generic term. The Court of Appeals affirmed the lower court’s decision and concluded the USPTO had not met its burden to show BOOKING.COM is generic and that BOOKING.COM is in fact a protectable trademark. The USPTO filed its petition for writ of certiorari on July 5, 2019.  The Court granted certiorari on November 9, 2019 and set the matter for argument on March 23, 2020 and later rescheduled the matter to be heard telephonically on May 4, 2020, with live audio to be provided to the media for reporting and live-streaming purposes.

The Court’s recent and historic break from tradition in deciding to hear oral argument telephonically and to stream this case by live audio is a rare opportunity for trademark practitioners and owners alike. Indeed, this case represents what could be an exodus from the long-standing position that top-level domains (TLDs) do not serve a source identifying function, and adding “.com” to an already generic term cannot result in a protectable trademark. Roughly sixteen parties filed amici briefs in this case – interested in the departure from earlier precedent and the potential anticompetitive effects this ruling may create. Others could rush to register generic domains with “.com” extensions for the purpose of blocking competitors from using terms that are otherwise necessary for competition.

Hearing Date:  Tune in on Monday, May 4, 2020 to be part of this historic trademark case and unique audio event. Additional updates from the Court, including other cases to be heard by telephonic conference, can be found at www.supremecourt.gov.