Presented by the Intellectual Property, Technology and Media Litigation Practice Group

U.S. Supreme Court to Decide Pivotal Trademark Dispute

In The United States Patent and Trademark Office v. B.V., the U. S. Supreme Court will decide whether the addition by an online business of a generic top-level domain (.com) to an otherwise generic term can create a protectable trademark. A decision is expected in late June 2020. is a website that allows customers to book hotel accommodations. The website operator filed four federal trademark-registration applications for marks that included or consisted of the term “BOOKING.COM.” The U.S. Patent and Trademark Office refused registration of the marks, finding that the term “booking” is generic for the services as to which the website operator sought registration. According to the agency, the addition of the generic top-level domain “.com” did not create a protectable trademark.

The USPTO argues that treating BOOKING.COM as a protectable trademark would allow a single entity to monopolize the term “booking” with respect to the relevant online services and would hinder competitors from using it in their own domain names. The USPTO relies on an 1888 Supreme Court decision, Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U.S. 598, 602 (1888), which held that the addition of an entity designation like “Company” to an otherwise-generic term does not create a protectable mark. The USPTO argues that the same principle applies to the addition of the top-level domain “.com,” which indicates only that the respondent operates an online business. The USPTO also argues that the Fourth Circuit erred in extending the concept of secondary meaning to generic terms by finding that, because had produced evidence that consumers associate BOOKING.COM with its specific business, the district court had properly found the term non-generic., on the other hand, counters that whether a trademark is generic is a question of fact to be decided under the primary significance test. This test states that the genericness of a mark is its primary significance to the relevant public. maintains that it presented sufficient evidence to demonstrate that the primary significance of the name BOOKING.COM is as a trademark and not the identity of an entire class of goods or services. The company also refutes the applicability of the Goodyear's case since it made no finding of genericness but, instead, referred to “Goodyear Rubber” as a descriptive term, which was at the time equally unprotectable under the common law.

The decision could have interesting ramifications in the online arena. A decision in favor of could lead to increased policing and litigation of similar domain names, potentially hindering marketplace competition. Alternatively, a decision in favor of the USPTO could jeopardize many PTO-registered marks upon which consumers have come to rely.


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