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Supreme Court rules is protectable mark
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Supreme Court rules is protectable mark

The US Supreme Court ruled 8-1 Tuesday that the addition of “.com” to a generic term can create a protectable mark, handing a win to hotel reservation site

In United States Patent and Trademark Office v BV, the court upheld a Fourth Circuit decision stating that simply adding a top-level domain to a generic term does not render the mark generic in its entirety. In arriving at this decision, the Fourth Circuit relied on Teflon Survey evidence, which illustrated that 74.8 percent of respondents believed that “” was a brand name. The court also refused to adopt the Patent and Trademark Office’s per se rule: “when a generic term is combined with a generic Internet-domain-name suffice like ‘.com,’ the resulting combination is generic.” Justice Ruth Bader Ginsburg wrote the opinion, joined by Chief Justice John Roberts and Justices Clarence Thomas, Samuel Alito, Sonia Sotomayor, Elena Kagan, Neil Gorsuch and Brett Kavanaugh. Justice Stephen Breyer dissented.

While the court refused to adopt the PTO’s per se rule, it noted that generic terms with the added top-level domain “.com” will not automatically be rendered nongeneric. Rather, such terms will only be nongeneric if consumers “perceive the term as the name of a class or, instead, as a term capable of distinguishing among members of the class.”

In her opinion, Ginsburg stated:

The PTO’s policy concerns do not support a categorical rule against registration of “” terms. The PTO asserts that trademark protection for “” would give the mark owner undue control over similar language that others should remain free to use. That concern attends any descriptive marks. Guarding against the anticompetitive effect the PTO identifies, several doctrines ensure that registration of “” would not yield its holder a monopoly on the term “booking.” The PTO also doubts that owners of “” brands need trademark protection in addition to existing competitive advantages. Such advantages, however do not inevitably disqualify a mark from federal registration.

In his dissent, Breyer stated that adding “.com” to the generic word booking did not give the phrase “” an additional meaning beyond its constituent parts. Thus, the mark should not be afforded trademark protection. In arriving at this decision, Breyer relied on Goodyear, which indicated that the addition of “corp,” “inc” or “assn” to a generic term did not provide any source-identifying significance. The majority’s decision in this case, Breyer believes, will “lead to a proliferation of ‘’ marks, granting their owners a monopoly over a zone of useful, easy-to-remember domains.”