Can be a trademark – that’s the question

Megan Taylor (Novagraaf) published an interesting article for Lexology where she discusses the topic for registration possibilities of low distinctive or generic names as trademarks.

The case at hand concerns the’s attempt to register this domain name as a word trademark in the US. So far all applications for such trademarks have been refused by the USPTO. The arguments for this were the fact the booking is descriptive word for accommodation services for which the registration was sought.

The company’s position, however, was that the presence of .com makes the difference because it helps consumer to associate the word with the company’s business and in that way to create secondary meaning for the word.

The USPTO considers that such words have to be left for free use by all market participants.

Currently this case is submitted to the US Supreme Court and everyone expect its position.

In contrast, was more successful in the EU. They received registration for its word mark in 2007 after proving acquired distinctiveness among the consumers.

Having said that, however, the EUIPO has changed its practice on the matter and nowadays it is really difficult such generic words to be registered as word marks even in case of evidence for a secondary meaning.

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