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Guidance on the Supreme Court’s Decision in USPTO v. BOOKING.COM

The United States Patent and Trademark Office (“USPTO”) has issued Examination Guide 3-20, which provides guidance on “Generic.com Terms after USPTO v. Booking.com”

In June 2020, the Supreme Court reversed decisions of USPTO, rejecting a rule that a mark which consists of the combination of a generic term and a generic top-level domain (like “.com”) is automatically generic.  The USPTO had held that the proposed mark BOOKING.COM was generic as applied to the identified hotel reservation services, or, in the alternative, was merely descriptive and had not acquired distinctiveness.  The USPTO had been affirmed by the Trademark Trial and Appeals Board (“TTAB”), and then reversed by the District and Circuit Courts.

The Supreme Court said that proposed marks consisting of a combination of a generic term and a generic top-level domain were neither automatically generic, nor automatically non-generic.  Instead, the marks must be assessed on a case-by-case basis in order to determine eligibility for registration.  Examining USPTO attorneys must consider whether the evidence shows that consumers would recognize the proposed generic.com mark as the name of a class of goods and/or services or, rather, they would see the mark as a source indicator.

It is important for businesses to understand that, while such a generic.com mark may be registered, it may be entitled to a narrower scope of protection, as the Supreme Court itself noted in Booking.com.  If a proposed mark contains additional matter that adds to a registered generic.com mark, it may be determined that consumer confusion as to the source is not likely.    In other words, your competitor with a highly similar name may also be allowed registration.

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