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Supreme Court to Consider When a Mark Is Too Generic for Protection

The Supreme Court of the United States granted certiorari on a petition filed by the US Patent and Trademark Office (PTO) seeking to overturn a district court decision in favor of Booking.com. The PTO argues that the mark is too generic to be accorded trademark protection. U.S. Patent and Trademark Office et al. v. Booking.com BV, Case No. 19-46 (Supr. Ct. Nov. 8, 2019) (cert granted).

After the PTO refused registration of the mark “Booking.com” on the grounds that the name was generic, a district court ruled that the addition of “.com” made the otherwise generic mark a protectable trademark. The US Court of Appeals for the Fourth Circuit affirmed that ruling (IP Update, Vol. 22, No. 23).

According to the Fourth Circuit “[w]hen ‘.com’ is combined with [another term], even a generic [other term], the resulting composite may be non-generic where evidence demonstrates that the mark’s primary significance to the public as a whole is the source, not the product.”

In its petition, the PTO argued that the addition of “.com” to a generic word does not render it distinctive and that the Fourth Circuit ruling could allow aggressive entities to lock up generic terms—English language expressions that should be free for all to use.

The issue presented is: Whether, when the Lanham Act states generic terms may not be registered as trademarks, the addition by an online business of a generic top-level domain (“.com”) to an otherwise generic term can create a protectable trademark.

© 2019 McDermott Will & Emery

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About this Author

Paul Devinsky, Intellectual Property Attorney
Partner

Paul Devinsky is a partner in the law firm of McDermott Will & Emery LLP and is based in the Firm’s Washington, D.C., office.  He focuses his practice on patent, trademark and copyright litigation and counseling, as well as on trade secret litigation and counseling, and on licensing and transactional matters and post-issuance PTO proceedings such as reissues, reexaminations and interferences.

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