At the end of June, the U.S. Supreme Court ruled on the "Booking.com" case and issued a ruling intended to affect the registration of trademarks related to generic terms in the United States.
The Court recognized the trademark "Booking.com" - owned by Booking Holdings Inc. - as a trademark, despite the generic term "booking". In the past, the Patent and Trademark Office had not granted registration of the Booking.com trademark on the grounds that the trademark was "generic", although a specific qualification could be inferred from the presence of the ".com". Instead, on June 30, 2020, the Court overturned the Office's decision and underlined the importance of consumers' perception of the trademark and that Booking.com is not perceived by consumers as a generic trademark.
According to US law a company cannot claim ownership of the name of an entire product category because this would constitute an act of unfair competition against competitors and because it would lack the fundamental characteristic of distinctiveness. In the case of Booking, however, the judges of the Supreme Court found the lack of confusion on the part of consumers, who in referring to Booking.com do not refer to a generic aggregator of hotels but to a specific provider that they identify through the Booking.com brand and which guarantees a certain level of quality and reliability.
This ruling marks the beginning of a new jurisprudential orientation in the USA and a victory for all companies that have invested in the awareness of weak brands that use generic terms. To better understand the scope of the device and the requirement of distinctiveness, it is good to refer to two brand categories that have been developed in jurisprudence: the weak brand and the strong brand. Weak trademarks are those that are conceptually linked to the product because the word that identifies the trademark corresponds to the generic term of the product or is substantiated by the words generally used to refer to the product in question.
The strong brand, on the other hand, is not conceptually linked to the product and is not immediately referable to it. The degree of protection granted to the strong trademark or the weak trademark changes in the different legal systems, but in any case the weak trademark is granted a lower level of protection than the strong trademark.
In 2015, the Italian Supreme Court also ruled on the distinctiveness of the weak registered trademark "Divani&Divani" owned by Natuzzi Spa and overturned the previous ruling issued by the Court of Appeal. The Court of Appeal in its judgment had not considered that, even if the trademark "Divani&Divani" was a weak trademark, this - with the passing of the years and following its commercial use - had acquired a strong distinctive capacity and the use of a trademark of the same name by a competing company operating in the same product area would inevitably generate confusion among consumers.
The Supreme Court on the other hand, found that, although "Divani&Divani" was a trademark using generic and commonly used words, lacking the character of originality, it had acquired a "secondary meaning" (see ruling of the Supreme Court no. 4294/1974, no. 2884/1985, no. 18920/2004, no. 10071/2008) and was endowed with the distinctive character necessary for it to be recognized by consumers. These two judgments show how a trademark initially weak and devoid of distinctive character can be converted into a strong trademark as a result of its intense commercial use and advertising campaigns that raise awareness among the relevant public and make it distinctive and bearer of secondary meaning.