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Posts Tagged: "TLDs"

USPTO Urges Supreme Court to Reverse in Now-Delayed Booking.com Case

On March 13, the United States Patent and Trademark Office (USPTO) filed a reply brief urging the Supreme Court on to reverse a judgment of the U.S. Court of Appeals for the Fourth Circuit that held BOOKING.COM to be a registrable trademark. The case was set to be argued on Monday, March 23, but was postponed due to the coronavirus pandemic. Fifteen parties have filed amicus briefs in the case, most of those in support of Booking.com. In response to Booking.com’s brief of February 20, the USPTO primarily argued that, 1) Goodyear Co. v. Goodyear Rubber Co. remains good law and resolves the question presented in the present case, 2) Sound trademark policy supports the conclusion that adding a top-level domain, such as .com, to a generic term does not lead to a protectable trademark, and 3) Booking.com’s survey evidence does not provide a sound basis for treating the term “Booking.com” as a registrable trademark.

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.