U.S. Supreme Court

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.

See also:

ABAJournal.com: “Does adding ‘.com’ to generic name create protectable trademark? Supreme Court to decide”

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