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Tiffany Wang is an IPilogue Writer, IP Innovation Clinic Fellow, Intellectual Property Journal Editor, and a 2L JD Candidate at Osgoode Hall Law School.
In the midsummer of 2020, the Supreme Court of the United States rendered an unusual decision in its first . The case, , signals broader protections for trademarks vis-à-vis .
In . The USPTO’s both denied the registration, underscoring that consumers will perceive
Writing for the 8-1 Supreme Court, Justice Ruth Bader Ginsburg affirmed the . Justice Ginsburg underscored that Booking.com is a distinctive business and that the public will not misunderstand the brand. Having acquired sufficient distinctiveness in the marketplace, “Booking.com” moves away from the generic category as a descriptive mark. The distinctiveness of a trademark is measured on the . In the case at hand,
This case finds a fine equilibrium between two factors: enhancing trademark protection and valuing consumer perception. Stronger trademark protection enhances Booking.com’s brand image and goodwill. Granting trademark registration to Booking.com simultaneously enhances the significance of consumer voices. Consumers are able to distinguish the services provided by Booking.com from those of other lodging competitors.
Practitioners may worry that this case opens the floodgates to trademark litigation. The Supreme Court blurred the . Additionally, Permitting the registration of “generic.com” domain names may lead to .
In an increasingly digital arena, defying clear trademark doctrine may inevitably deplete the USPTO’s authority to prevent an influx of generic marks from entering the marketplace and diluting the value of more distinctive trademarks. The majority underscores that consumers perceive that . Even if the majority reasonably valued consumer data, did the majority err in granting too much weight to public input?