United States PTO v. Booking.com B.V.

Whether a term is generic for the purposes of federal trademark registration depends on its meaning to consumers and this distinctiveness inquiry focuses on the term’s whole meaning and not its isolated parts.

Respondent, an online travel-reservation company, sought federal registration of trademarks containing the term “Booking.com.”  Petitioner rejected Respondent’s applications after deciding that the term “Booking.com” is generic online hotel-reservation services. The district court reversed Petitioner’s determination and concluded that Respondent’s marks met the distinctiveness requirement for federal trademark registration because the consuming public understands that Booking.com “is descriptive of services involving ‘booking’ available at that domain name.” The Fourth Circuit agreed. On appeal, the Supreme Court affirmed, holding that a term like “generic.com,” as a generic name for goods or services, is unentitled to federal trademark protection only if consumers associate it with that meaning. The Supreme Court, by emphasizing consumer perception as “a bedrock principle of the Lanham Act,” held that because consumers do not consider “Booking.com” a generic name, it is not generic. Furthermore, the Supreme Court explained that the distinctive inquiry, for a compound term, focuses on the term’s whole meaning, not its isolated parts. Therefore, the Supreme Court held that “Booking.com,” contrary to the stand-alone term “booking,” is not generic and is eligible for trademark registration. AFFIRMED.