Original Photo By: PATRICK SEMANSKY AP
Fun fact: Add “.com” to any word, run some ads, take a public survey, and you’re on your way to transforming a generic (uncopyrightable) term into pure gold.
By an 8-1 decision, lead by Justice Ruth Bader Ginsberg, the Supreme Court agreed with both the 4th Circuit and federal district court finding that the term “Booking.com” could be protected by trademark law once the term gained secondary meaning. The company behind Booking.com provided a survey to the federal district court showing that 74% of consumers recognized the term related to its hotel registration services. This decision was in direct conflict with U.S. Patent and Trademark office who denied registration under a long-standing policy that the combination of a generic term for goods and services with the “.com” suffix did not create a protectable trademark.
Given today’s decision, it wouldn’t be surprising that the U.S. Patent and Trademark office will need to re-think their “longstanding policy.”
Credit to Jessica Litman and the team at ScotusBlog.com for providing a great summary (and all my law school reading entertainment) of the procedural history and outcome.
Jessica Litman, Opinion analysis: Court holds that “generic.com” marks may be registered trademarks or service marks when consumers do not perceive them as generic, SCOTUSblog (Jun. 30, 2020, 6:32 PM), https://www.scotusblog.com/2020/06/opinion-analysis-court-holds-that-generic-com-marks-may-be-registered-trademarks-or-service-marks-when-consumers-do-not-perceive-them-as-generic/
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