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IP Alert: Supreme Court Rules Can Trademark Name

June 30, 2020

Today, in United States Patent and Trademark Office et al. v., 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 in its petition to trademark its name.

The USPTO had previously refused registration, maintaining that “” was a generic term for online reservation services. Upon review, the District Court for the Eastern District of Virginia determined that “” was not a generic term, unlike the standalone term “booking.” The Court of Appeals for the Fourth Circuit agreed, saying “” 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 ‘’ 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 '' 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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