#SCOTUS rules that the addition of “.com” to a generic term can create a protectable trademark
— SCOTUSblog (@SCOTUSblog) June 30, 2020
Booking.com has won its trademark case at the United States Supreme Court. The 8-1 decision was written by Justice Ruth Bader Ginsberg. Justice Stephen Breyer was the lone dissenting Justice. You can read the PDF decision on the Supreme Court website.
The company will now have trademark protection for its full Booking.com brand, including the .com domain name extension. The Internet Commerce Association (ICA) filed an Amicus brief as part of this case.
Debevoise & Plimpton partner David Bernstein, who filed the SCOTUS Booking.com briefing as co-counsel, offered comments on today’s Supreme Court decision:
“The Supreme Court has confirmed what millions of consumers have known for years – Booking.com is a brand name, not simply a web address. In a 8-1 decision written by Justice Ginsburg, the Court confirmed that the consumer is king when it comes to brand names, and if consumers perceive a term to be a brand name and not merely a generic or descriptive reference, then that name is entitled to trademark protection. This decision is a victory for countless brand owners that have invested significant resources in building their brands – such as Weather.com, Law.com, Wine.com and Hotels.com, as well as others like Home Depot, Salesforce, TV Guide, Pizza Hut, and The Container Store – whose trademarks, the Court acknowledged, would have been at risk if the government’s position was accepted.”