Creating the Meaning of Your Trademark
US Patent and Trademark Office v. Booking.com BV
Recently, the Supreme Court decided a trademark case that asked a very specific question. The answer could have a big impact on businesses trying to protect their brands.
In US Patent and Trademark Office v. Booking.com BV, the Supreme Court had to decide whether a generic word with the addition of a top-level domain, such as .com, would always be an unprotectable generic name, or in the right context a protectable trademark.
Words, names, and symbols, can be a protectable trademark if (and that “if” is very important here) they identify the source of goods or services and distinguish it from others. This concept is central to how trademark law works. When we see a word on a product, we sometimes recognize it as identifying the producer of that product, but it depends on context. For example, when we see the word “Coke” on a red can, we can immediately recognize that the word is identifying the producer. Not every word works that way and despite all of our rules of grammar and legal rules about trademarks, sometimes you just have to ask people what they think a word means.
In this case, Booking.com had applied to register “BOOKING.COM” for their online travel reservation services. The USPTO refused to register because the word “booking” is generic for their travel booking services and “.com” merely indicates that it is a commercial website. The USPTO was following a rule that stated that domain names generally do not add any information about identifying the source of a product. And generally, that is still true.
However, Booking.com was able to provide evidence that consumers really did recognize “BOOKING.COM” as brand name. They conceded that “booking” by itself was generic, and couldn’t be a trademark, but this combination was recognizable to consumers and should be protected. They argued that the evidence showed that in this particular context, the consumer’s understanding was that it was a trademark, and that the consumer understanding should control the outcome.
The Supreme Court agreed with Booking.com. The majority opinion noted that while it may be that some generic words don’t become a trademark just by adding “.com” the USPTO’s bright line rule was too inflexible because it ignored consumer perceptions. To put it another way, context matters and evidence about what the public understands matters too.
What businesses can learn from the Booking.com Case
On the surface, this case merely restated basic principles of trademark law. But, what won the case for Booking.com, was evidence of what consumers actually perceive. This suggests that companies should pay greater attention to how they use their trademarks. Businesses will want to take note of how their trademarks are being perceived by consumers.
This might include noticing how the trademark appears in advertising copy, including “look for” advertising that directs consumers attention to the trademark, and occasionally simply asking customers if they recognize the name.
Trademarks can be valuable assets for a business. Consumers often are willing to pay higher prices for brands they recognize. Trademarks can build trust in a company. But that only works when consumers recognize and understand the message you are trying to convey.