November 19, 2019

SUPREME COURT TO DECIDE IF ADDING ".COM" TO A GENERIC WORD MAKES IT REGISTRABLE AS A TRADEMARK


Does adding “.com” to an otherwise generic word qualify it for registration as a trademark?  The Supreme Court is poised to decide after granting certiorari in United States Patent and Trademark Office v. Booking.com B.V.  

The Lanham Act, 15 U.S.C. 1051 et seq., creates the framework for trademark registration in the United States and provides that “any word, name, symbol, or device, or any combination thereof” that identifies a person’s goods or services may be considered a trademark.  The law is filled with numerous exceptions.  Trademark applications filed before the United States Patent and Trademark Office (“USPTO”) are reviewed by a USPTO examining attorney to determine if one of those exceptions might prevent registration.

One exception to registration is a “generic” mark: a trademark that refers to the category of goods or services for which the mark is used.  If a mark is found to be generic, it cannot be registered and the USPTO will refuse the application.

In Booking.com, the popular travel website filed a trademark application for “Booking.com” before the USPTO and it was rejected for being generic.  The USPTO found that “Booking” was generic for travel websites and that simply adding “.com” would not alleviate the issue.  Booking.com appealed the decision through the federal courts.  The Supreme Court will now decide whether adding “.com” will make a word that is otherwise generic (like “Booking”) registrable as a trademark before the USPTO.

The decision may have a significant impact on e-commerce and the trademark landscape.  If the Supreme Court determines that adding “.com” eliminates the generic refusal, a torrent of other generic “.com” owners may rush to register their website related marks.

Stark Weber PLLC routinely works with clients to navigate trademark registration and other corporate and intellectual property matters.  For more information, please contact Jared Stark at jared@starkweber.com. 


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