Seeing the possibility of “hundreds” of existing, often well-known trademarks being threatened, Debevoise with co-counsel Williams & Connolly LLP, filed a U.S. Supreme Court brief on February 12 on behalf of client Booking.com, N.V., one of the world’s leading digital travel companies. Booking.com was successful in the lower courts in winning the right to register its eponymous domain name, BOOKING.COM, as a trademark, despite the U.S. Patent and Trademark Office’s earlier ruling that a generic term plus a web address is too generic for trademark protection. The Supreme Court accepted certiorari to decide “whether the addition by an online business of a generic top-level domain (‘.com’) to an otherwise generic term can create a protectable trademark.”
The brief argues that, if the U.S. Supreme Court accepts the U.S. Patent and Trademark Office’s position, registrations of trademarks comprised of arguably generic elements - including domain names like Weather.com, Law.com, and Hotels.com, as well as other marks like TV Guide, Pizza Hut, and The Container Store - could be threatened. Covered in both Law360 and Bloomberg Law, the brief states that, “Such cancellations would squander billions of dollars that some of the country’s most famous brands have invested in cultivating consumer goodwill,” and “confuse over 300 million American consumers, who rely on hundreds of PTO-registered marks that defy the government’s per se rule.” Instead, the brief advocates, the Court should uphold the decision from the Court of Appeals for the Fourth Circuit, which recognized that the proper test is whether the primary significance of the mark to consumers is as a generic reference or a brand name, and here, the evidence overwhelmingly shows that BOOKING.COM is understood by the vast majority of consumers as a brand.
The Debevoise team is led by intellectual property litigation partner David Bernstein and includes associate Jared Kagan.
The case is United States Patent and Trademark Office et al. v. Booking.com BV, case number 19-46, at the Supreme Court of the United States. Arguments are scheduled for March 23.