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Generic Trademarks on the Internet - The booking.com case

When a company is interested in positioning a brand, the first thing it should evaluate is if the trademark can really obtain protection, that is, to have exclusive rights on the use of this name in the market. This evaluation must be carried out on two fronts: (i) for the sign itself and whether it could function as a trademark and (ii) for the sign compared to the trademarks of its competitors in the market.

In this case, the United States Trademark Office (USPTO) rejected the registration as a trademark for booking.com, arguing that the term booking is generic and therefore cannot be appropriated by a single agent in the market, This would mean that no other competitor could use the expression booking for tourism services.

The brand under study also has the .com part, which cannot be granted exclusive rights as it is the most widely used extension for Internet domain names in the world.

May the combination of these two completely generic elements be strong enough to be a trademark? May consumers understand that booking.com does not refer to the usual way in which the services are referred to, but can they associate the name with a specific company?

The United States Supreme Court of Justice determined that yes, that indeed it was clear in the consumer's mind, that booking.com refers not to how a service is called, but to a specific company, different from its competitors.

Under Colombian trademark law, there is the concept of ‘acquired distinctiveness’. The concept of whether a brand is distinctive or is the generic manner in which products are described. This is a dynamic concept in time, and the law understands that the distinctiveness can be acquired or lost.

Booking.com started operations in 2006, that is, for 14 years it has made great efforts of advertising and promotion to the consumers, to let them know that this is a specific company that offers services under this name.

This can happen the other way around, that is to say that a trademark may lose distinctiveness. Historically there have been many cases in which the success of a product has been the fall for the trademark. Brands like Kleenex, Thermos, Oster, Jacuzzi, were so successful and innovative that in the consumer's mind, they became the generic term for naming the products. In these cases, the trademark owners had to make great efforts to make the consumer understand that they were a brand and not a product category, in order to keep their exclusive rights.

The case of booking.com is also interesting because the use of the .com to be granted protection opens the door to other similar cases such as Weather.com, Law.com, Wine.com and Hotels.com.

Everything is a matter of perception. Ruth Bader Ginsburg in her ruling stated “Because ‘Booking.com’ is not a generic name to consumers, it is not generic." It is a clear and straightforward conclusion. But reaching it should not have been easy.

Authors

Karl Mutter
Karl Mutter, LL.M.
Partner
Bogotá