June 30, 2020
Today, in United States Patent and Trademark Office et al. v. Booking.com, the U.S. Supreme Court held that a generic word can be granted trademark protection when it is part of a “.com” domain name, ruling in favor of Booking.com in its petition to trademark its name.
The USPTO had previously refused registration, maintaining that “Booking.com” was a generic term for online reservation services. Upon review, the District Court for the Eastern District of Virginia determined that “Booking.com” was not a generic term, unlike the standalone term “booking.” The Court of Appeals for the Fourth Circuit agreed, saying “Booking.com” is not generic because consumers would primarily understand the term to be a specific business. The USPTO then appealed to the Supreme Court, citing serious anticompetitive consequences if web addresses containing generic terms could be trademarked.
In an 8 to 1 vote, the Court affirmed the Fourth Circuit’s ruling, holding “A term styled ‘generic.com’ is a generic name for a class of goods or services only if the term has that meaning to consumers. . . . In circumstances like those this case presents, a 'generic.com' term is not generic and can be eligible for federal trademark registration.”
Further analysis including the probable effects of this ruling will be provided in an upcoming alert.
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