Breaking news – The US Supreme Court has ruled in favor of

The US Supreme Court has ruled in one of the most interesting cases recently regarding registration of generic names as trademarks.

The case at hand concerns the attempt of to register the same domain name as a word trademark. The USPTO refused this application based on absolute grounds – the term booking is descriptive (more detail can be found here)

As an argument for its decision the USPTO relied on another Supreme Court’s decision in the case Goodyear’s India Rubber Glove Mfg. Co. v. Rubber Co., where the Court considered that the use of Company after low distinctive sign cannot create distinctiveness by itself in order the sign to be registered as a trademark.

In the present case, however, the Supreme Court disagreed. While the additional element Company is not enough to create distinctiveness because it is not so specific, the .com element speaks for a particular domain name address, which is unique.

This means that even generic names + .com or another domain address can serve as trademarks in case consumers perceive them as such. The reason is that when consumers distinguish the generic name with the particular web address, this name starts to serve as a trade indicator for the relevant products or services because it leads to a particular website.

This doesn’t mean that after receiving protection all other competitors will not be able to use BOOKING as a term. Quite the contrary, they will do this with exception of the specific web address taken in it entirety.

Source: IPKat.


Leave a Reply

Fill in your details below or click an icon to log in: Logo

You are commenting using your account. Log Out /  Change )

Facebook photo

You are commenting using your Facebook account. Log Out /  Change )

Connecting to %s