U.S. Supreme Court

Does adding '.com' to generic name create protectable trademark? Supreme Court to decide

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The U.S. Supreme Court on Friday agreed to decide whether a generic word can be given trademark protection when it is part of a “.com” domain name.

The court agreed to hear the appeal by the U.S. Patent and Trademark Office in a case involving Booking.com, report Scotusblog, Reuters and Law360.

The Lanham Act bars trademark registration for generic terms. Booking.com argues the addition of “.com” to the generic term makes it a protectable trademark. The Richmond, Virginia-based 4th U.S. Circuit Court of Appeals had sided with Booking.com in February.

The appeals court said Booking.com is not generic because the relevant public would primarily understand the term to be a specific business.

The government’s cert petition argued a 4th Circuit partial dissent had the better argument.

According to the PTO, the 4th Circuit decision allowed Booking.com “to rely on survey evidence of brand identification to obtain federal trademark protection for a generic term, thus ‘freez[ing] out’ its competitors from using domain names that accurately categorize their services.”

The PTO notes that federal courts have denied trademark protection for other .com names using a generic word, including Lawyers.com and Hotels.com.

Booking.com argued in its brief opposing cert that decisions on whether a term is generic are factual in nature and should be decided on a case-by-case basis.

“The PTO itself conceded at the administrative level that ‘it is impossible to use BOOKING.COM in a grammatically coherent way to refer generically to anything,’ and that ‘it is not at all logical to refer to a type of product or service as a ‘booking.com,’ ” the company’s brief said.

The case is U.S. Patent and Trademark Office et al. v. Booking.com. The SCOTUSblog case page is here.

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