Is a Common Word Added to a TLD Like ‘.com’ Inherently Generic? Who Decides?
On November 8, the U.S. Supreme Court granted a Petition for Writ of Certiorari from the U.S. Patent and Trademark Office (USPTO) on the following issue: “Whether the addition by an online business of a generic top-level domain (“.com”) to an otherwise generic term can create a protectable trademark.” The issue stems from Booking.com B.V.’s attempt to register four versions of the trademark “booking.com” for, among other services, “making hotel reservations for others.” The applications, filed in 2011 and 2012, were refused by the USPTO on the grounds that “booking” and “.com” are generic terms which, when combined, nonetheless create a generic term which describes the travel agency and reservation services. In general, generic terms do not function as trade or service marks and cannot be registered.
The question on certiorari presents a potentially interesting conundrum which could limit the scope of its relevance in future cases. Specifically, the question presumes both the TLD (.com or .net for example) is inherently generic, and the term preceding the TLD is likewise generic.
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