Lieberman & Brandsdorfer, LLC
July 23, 2020 11:40 EDT
U.S. Supreme Court Upholds Federal Registration of GENERIC.COM-Styled Trademark
By David S. Taylor, Esq.
It is a longstanding principle of U.S. trademark law that terms that generically name a class of products or services are ineligible for federal trademark registration. The U.S. Patent & Trademark Office (“PTO”) has long taken the stance that the addition of a “.com” suffix to a generic term is likewise registration ineligible. However, in United States Patent & Trademark Office v. Booking.com B.V., No. 19-46 (June 30, 2020), the U.S. Supreme Court rejected the PTO’s per se rule by holding that the term “Booking.com”, when taken as a whole, is eligible for trademark registration in view of a lower court’s determination that consumers do not perceive the term “Booking.com” to signify online hotel-reservation services as a class. The Court rejected per se rules automatically favoring or disfavoring registration of generic.com-styled terms. Instead, the Court held “[w]hether any given ‘generic.com’ term is generic … depends on whether consumers in fact perceive that term as the name of a class [in which case the term is not federally registrable] or, instead, as a term capable of distinguishing among members of the class [in which case the term is federally registrable].” The Court’s decision will likely open a floodgate of trademark application filings at the PTO for “generic.com”-styled marks.