Generic word with '.com' at end can be trademarked, SCOTUS rules
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The U.S. Supreme Court ruled 8-1 Tuesday that a generic word with “.com” at the end is eligible for trademark protection if consumers don’t perceive it as a generic name.
Justice Ruth Bader Ginsburg wrote the majority opinion in a win for Booking.com. Justice Stephen G. Breyer was the only dissenter.
The U.S. Patent and Trademark Office had argued that adding “.com” to a generic word still leaves the phrase ineligible for trademark protection.
Ginsburg noted that a generic name is ineligible for trademark registration. But in this case, lower courts had found that consumers don’t view Booking.com as a generic term for online hotel reservations, so it is entitled to register its trademark, Ginsburg said.
“Whether ‘Booking.com’ is generic turns on whether that term, taken as a whole, signifies to consumers the class of online hotel-reservation services,” Ginsburg wrote.
“Thus, if ‘Booking.com’ were generic, we might expect consumers to understand Travelocity—another such service—to be a ‘Booking.com.’ We might similarly expect that a consumer, searching for a trusted source of online hotel-reservation services, could ask a frequent traveler to name her favorite ‘Booking.com’ provider.
“Consumers do not in fact perceive the term ‘Booking.com’ that way, the courts below determined. The PTO no longer disputes that determination. … That should resolve this case: Because ‘Booking.com’ is not a generic name to consumers, it is not generic.”
The case is U.S. Patent and Trademark Office v. Booking.com.
Hat tip to SCOTUSblog, which had early coverage of the opinion.
ABAJournal.com: “Does adding ‘.com’ to generic name create protectable trademark? Supreme Court to decide”