On Tuesday, June 30, the U.S. Supreme Court affirmed the Fourth Circuit’s holding that BOOKING.COM is a protectable trademark. The U.S. Patent and Trademark Office (USPTO) had refused registration of Booking.com’s housemark, finding that the mark was generic—in other words, a term that consumers understand as primarily the common or class name for the underlying services. The specific issue before the Court was “[w]hether the addition by an online business of a generic top-level domain (“.com”) to an otherwise generic term can create a protectable trademark.” The Court ultimately sided with the popular online travel company Booking.com in an 8-1 decision, holding that “[a] term styled ‘generic.com’ is a generic name for a class of goods or services only if the term has that meaning to consumers.” The ruling paves the way for the registration of “generic.com” terms upon a showing of acquired distinctiveness—but obtaining such registrations will not be easy, or cheap.
Litigation
- CAFC Gives Google Second Shot at PTAB in Challenge of Communications Patents
- LG’s Recent Infringement Fight Against TCL Could Take Some Tips from DivX’s Approach
- In re Killian: Harvey the Rabbit Comes to the Federal Circuit
- California Court Holds Pinterest’s Display of User-Uploaded Works Near Ads are Protected by DMCA Safe Harbor
- Hirono and Tillis Give Vidal One Month to Answer Questions on Abuse of PTAB Process
Recent Posts
- USTR Needs to Step Up Trade Enforcement
- IP Practice Vlogs: Claiming Foreign Priority – An Overview of Patent Cooperation Treaty, Paris Convention and Patent Prosecution Highway Practice
- Other Barks & Bites for Friday, May 20: CAFC Remands No Case or Controversy Determination to Eastern Texas, Ninth Circuit Rules 2018 Farm Act Legalized Delta-8 THC Trademarks, and EU Commission Directs Member States to Codify Copyright Rules
- CAFC Gives Google Second Shot at PTAB in Challenge of Communications Patents
- Policy Shift Against SEP Rights Poses Risks for U.S. Innovation and Undermines Mandate of the ITC