Robert Kenney

has over 30 years of experience in patent, trademark and copyright litigation, as well as trademark prosecution, counseling and portfolio management. Mr. Kenney helps clients protect, profit from and enforce their valuable intellectual property rights, including licensing and intellectual property asset acquisition, creating and protect trademarks, building brands and making trademarks and brands profitable. Mr. Kenney is also a certified patent valuation analyst (CPVA), helping clients determine the value of patents and patent portfolios for commercializing their IP rights.

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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.

December 18, 2019

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