The U.S. Supreme Court agreed to use a case involving Booking.com to consider whether businesses can get federal trademark protection for website names that center on a commonly used word.
The justices said they will hear a Trump administration appeal of a ruling that said Booking.com, owned by Booking Holdings Inc., should be put on a government registry that provides nationwide benefits.
Federal registration gives trademark owners protections on top of the rights they already have under state law. Registration can confer exclusive rights in parts of the country where no one was already using the name or image, help owners win lawsuits, and put would-be competitors on notice that a trademark is legally protected.
The administration says “booking” is a generic term that doesn’t qualify for registration even if “.com” is added at the end. Under federal trademark law, generic terms are those that don’t distinguish a product or service from others on the market.
The administration says registration might let Booking.com sue competitors for using such internet domain names as roomsbooking.com or hotelbooking.com.
The decision by the 4th U.S. Circuit Court of Appeals “threatens to cause serious and immediate anticompetitive harms,” U.S. Solicitor General Noel Francisco argued in court papers.
The company says consumers have come to identify Booking.com as a brand that provides valuable reservation services. The company contends that the rejection of its registration applications would put consumers at risk of being misled.
“Denying registration will only free unscrupulous competitors to prey on its millions of loyal consumers by falsely advertising as ‘Booking.com’ or making deceitful direct promotions,” the company argued. “Given the extraordinary popularity of Booking.com, such risks are substantial.”
U.S. appeals courts have reached different conclusions on the subject. Although the Richmond, Va.-based 4th Circuit sided with Booking.com, other courts have ruled against the registration of Advertising.com, Hotels.com and Mattress.com.