is a shareholder at Wolf Greenfield who focuses his practice on the enforcement and defense of intellectual property rights in patents, trademarks and domain names. He has assisted clients in a number of industries including airport and border security and detection services, pharmaceuticals, medical devices, internet-based sales, yacht brokerage, telematics, home warranty, and snowboard design. He has applied his training to all aspects of litigation from inception through appeal, including as “first chair” at trial.
On Tuesday, June 30, the U.S. Supreme Court affirmed the Fourth Circuit’s holding that BOOKING.COM is a protectable trademark. The U.S. Patent and Trademark Office (USPTO) had refused registration of Booking.com’s housemark, finding that the mark was generic—in other words, a term that consumers understand as primarily the common or class name for the underlying services. The specific issue before the Court was “[w]hether the addition by an online business of a generic top-level domain (“.com”) to an otherwise generic term can create a protectable trademark.” The Court ultimately sided with the popular online travel company Booking.com in an 8-1 decision, holding that “[a] term styled ‘generic.com’ is a generic name for a class of goods or services only if the term has that meaning to consumers.” The ruling paves the way for the registration of “generic.com” terms upon a showing of acquired distinctiveness—but obtaining such registrations will not be easy, or cheap.