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February 25, 2020 | By S&H
Posted in: S&H IP Blog | U.S. Supreme Court

United States Patent and Trademark Office v. ”“ Obtaining a U.S. federal trademark registration for domain names

            On November 8, 2019, the U.S. Supreme Court (“Supreme Court”) granted certiorari in United States Patent and Trademark Office v. The question before the Supreme Court is whether an online business can create a protectable trademark by adding a generic top-level domain (e.g. “.com”) to an otherwise generic term.


   operates a website where customers can book travel and hotel accommodations. In 2012, filed a trademark application for the use of BOOKING.COM as a word with the United States Patent and Trademark Office (“USPTO”). During prosecution of the trademark application, the examiner rejected the mark as being generic and therefore, not protectable. In the alternative, the examiner determined that even if the mark was found descriptive, had failed to establish it had acquired secondary meaning as required for trademark protection. The Trademark Trial and Appeal Board (“TTAB”) upheld the examiner”™s rejection and appealed the decision by filing an action in the U.S. District Court for the Eastern District of Virginia (“District Court”) against the USPTO.


            The District Court reversed the TTAB decision, finding that the term BOOKING.COM, as a whole, was a descriptive mark. Further, the District Court found had demonstrated the mark had achieved secondary meaning through a survey in which 74.8% of consumers indicated they recognized BOOKING.COM as a brand rather than a generic service. The USPTO appealed to the U.S. Court of Appeals for the Federal Circuit (“Federal Circuit”), which affirmed the District Court”™s holding. The USPTO timely petitioned for a writ of certiorari with the Supreme Court.


            In its petition for certiorari, the USPTO primarily contends the long standing precedent that the addition of entity designations like “Company,” to an otherwise generic term, is not protectable under trademark law, is similarly applicable to the top-level domain “.com.” Specifically, the USPTO argues “.com” only denotes an online business, like entity designations such as “Company” only indicates parties formed by association or partnership. Additionally, with respect to the finding that BOOKING.COM achieved secondary meaning, the USPTO asserts that “it has long been established that, no matter how successful ”˜the user of a generic

term”™ is ”˜in securing public identification”™ between the term and its commercial user,” the term cannot be federally registered in the U.S.


            In its response in opposition to the USPTO”™s petition for certiorari, asserts that whether a trademark is generic is a question of fact. Accordingly, as provided by the survey in the District Court proceedings, emphasized that it demonstrated that a trier of fact, the public, established BOOKING.COM was a descriptive mark rather than a generic term. Moreover, cited several examples where the USPTO had previously registered marks which contained a generic top-level-domain such as: STAPLES.COM, WEATHER.COM, and ANCESTRY.COM.


In the event the Supreme Court finds in favor of, there will likely be an increase in the number of trademark applications filed in the USPTO from applicants who believed their domain names were generic. However, if the Supreme Court finds in favor of the USPTO, then the refusal to register domain names will remain in effect.


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