EFF often criticizes the Patent and Trademark Office (PTO) for granting bad patents, but a case in the Supreme Court has us on the same side.
On Monday, EFF filed an amicus brief asking the court to reject trademark protection for “Booking.com,” pointing out that other travel companies that use variations of the word “booking” in their domain names could face legal threats if the mark were granted.
The case started in 2016, when Booking.com sued the PTO for refusing its trademark application on the basis that “Booking.com” is a generic term for the services it provides. Generic terms refer to categories or classes of things that can’t be trademarked because of the effect on free speech and competition. For example, you wouldn’t want Apple to have a trademark for the word “computer,” because other computer manufacturers should be allowed to accurately describe their products. However, a lower court judge decided that adding the “.com” to the end of the generic word “booking” made it eligible for trademark protection. Last year, an appeals court agreed.
The PTO rightly took its case to the Supreme Court. In our brief, we argued that granting a mark like this would hurt both consumer rights and competition. For example, there are a number of companies with domain names like “ebooking.com” and “bookit.com.” Even if the names are not identical to Booking.com, they could be at risk of lawsuits under trademark liability’s “likelihood of confusion” standard. Additionally, a win for Booking.com would likely kick off a flood of additional trademark requests for combinations of generic words and top-level domains, leading to even more uncertainty and drawn-out court cases.
The Supreme Court has granted certiorari and will likely hear oral arguments in the case later this year. We hope the justices recognize that the PTO had it right: generic words with “.com” at the end don’t deserve trademark protection.