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Generic.com: SCOTUS to Consider Whether a Top-Level Domain Creates a Protectable Trademark

November 15, 2019
Post by Nicholas J. Krob

Much to the chagrin of companies such as Bayer, DuPont, Westinghouse, and Motorola—former owners of trademark rights in, respectively, the terms “aspirin,” “cellophane,” “laundromat,” and “flip phone”— U.S. law does not protect terms that identify the general nature of a product or service itself rather than the source thereof, or “generic” terms, as trademarks.  What if, however, these generic terms are accompanied by “.com”?  Is that enough to create a protectable trademark?

Last week, the United States Supreme Court granted certiorari in U.S. Patent and Trademark Office v. Booking.com, whereby it will answer this very question.

The case at hand stems from the USPTO’s denial of travel company Booking.com’s applications to register various trademarks containing the term BOOKING.COM for online hotel reservation services on the basis that the term “BOOKING” was generic as applied to such services and that the addition of “.COM” did not alter or render unique or creative the commercial impression of the applied-for mark.  The United States District Court for the Eastern District of Virginia subsequently disagreed, stating that, when combined with a generic “second-level domain” (such as “booking”), a “top-level domain” (such as “.com”) generally has source identifying significance, and concluding that “the combination of [the two] is generally a descriptive mark that is protectable upon a showing of acquired distinctiveness.”  On appeal, the United States Court of Appeals for the 4th Circuit affirmed the decision of the District Court, concluding that “BOOKING.COM, taken as a whole, is not generic.”

It will be interesting to see whether the Supreme Court adopts a position this Spring whereby top-level domains may serve to give trademark protection to generic terms, or whether instead Booking.com will be forced to join the list of companies yearning for federal trademark registration in its successful marks.

A copy of the USPTO’s Petition for a Writ of Certiorari in this case can be found here.

Nicholas J. Krob is an Associate Attorney in the Trademark, Licensing, and Litigation Practice Groups at McKee, Voorhees & Sease.  For additional information, please visit www.ipmvs.com or contact Nicholas directly via email at nicholas.krob@ipmvs.com.

 



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