IP Client Alert: Supreme Court Ruling in ‘.com’ Case Could Make Waves in Trademark Law

In a significant case for online businesses, the Supreme Court recently ruled that adding a domain extension such as “.com” to a generic word can make the mark eligible for trademark protection. The 8-1 decision upheld an appeals court ruling that found travel reservation website Booking.com eligible to register its name after being denied protection by the U.S. Patent and Trademark Office (USPTO).

In its opposition, USPTO asserted that “booking” took on a second meaning when adding the “.com,” but the combination wasn’t enough to overcome the mark being a generic term because it conveys no source-identifying meaning. The USPTO relied on the definition of a trademark as a mark or logo that must identify and distinguish the source of goods of one party from those of another.

Booking.com argued that trademark protection was needed as it attempted to leverage business opportunities and prohibit competitors from opening storefront agencies or selling branded products with the more generic-sounding Booking.com name.

The Court found that the USPTO’s premise was faulty because only one entity can occupy a certain internet domain at a time. Therefore, the Court reasoned that consumers can only associate “Booking.com” or any “generic.com” with one entity. As such, “Booking.com” was recognized as meeting the definition for trademark protection.

Despite the ruling, businesses seeking trademark protection should be wary of using generic words. According to the USPTO, “because generic words are common, everyday names for goods and services and everyone has the right to use such terms to refer to their goods and services, they are not protectable.”

Please also note our other recent client updates on trademarks and patents:

For more information on this and other Intellectual Property matters, please reach out to partner David G. Oberdick at [email protected].

This material is for informational purposes only.  It is not and should not be solely relied on as legal advice in dealing with any specific situation.

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