Tag Archives: Copyright rulings

Average Joe SCOTUS: U.S. Patent and Trademark Office v. Booking.com B.V.

Booking.com, is a website where people can book travel and hotels and shit. They’ve been operating since 2006. In 2011, they asked for a patent/trademark of the name Booking.com, and for stylized versions of the logo.

Under the Lanham act, which guides the Patent Office (PTO), such requests must be distinctive enough, that they are unique to the applicant in a meaningful way. Since there are a shitload of booking sites, calling themselves Booking.com seems mighty fucking generic. Aside from that, you can win, if what you’re asking for has a secondary meaning that is unique to you, even if the primary meaning is pretty generic. But the PTO didn’t think that applied here either. So the PTO told Booking.com to fuck off.

The rejection of such generic terms tries to prevent people from copyrighting everything on the planet, making it impossible for new businesses to engage in such business. Like if a company who does bookings, but calls themselves BookThisShit.com, if someone could copyright the word “Booking,” then BookThatShit.com, along with any other company, couldn’t refer to the service they’re offering as “booking” because it’s been trademarked.

On appeals, Booking.com still lost. But then a district court felt like Booking.com had indeed taken on it’s own unique secondary meaning by combining the word “Booking” with “.com” that was unique to them.

So now SCOTUS is being asked to determine if a normally generic term that the PTO would typically reject, all of a sudden take on unique secondary meaning, just by adding the also generic term of “.com” to the end of it, and therefore should allow such a patent to be issued?

The PTO argued that Booking.com didn’t contest the rejection of “Booking Inc.” as a company name for copyright protection. So how the hell is “.com” at the end any different?

In a rare move, Clarence Thomas asked a question, proving once again, he’s not mute (Thomas is famously quiet during oral arguments, rarely asking anything), to ask about whether they could have patented a vanity phone number such as 1-800-BOOKING. Such trademarks are typically allowed, so why is a phone number OK, but a .com isn’t? Which let’s be honest, seems like a pretty good question.

He later asking Booking.com if they relied on the “primary significance” test to win. Meaning, if that should be all that’s considered for them to win. But she argued that by combining the two generic terms together, “Booking” and “.com”, you’ve made it unique, and therefore they win.

In my own mind, since that website can only be assigned in a technical manner to one company, seems kinda odd anyone could argue it isn’t unique, when technically it is distinctly unique. Yet no one seemed to argue this point.

Anyway, SCOTUS seemed to agree with me. In an 8-1 decision, they decided that if “booking.com” isn’t thought of as a generic term for all electronic bookings, but instead is uniquely thought of as a booking site specific to that company, then it’s fucking eligible for copyright protection.

Breyer was the lone dissenter.

Hear oral arguments or read about the case here.