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Major trademark victory for at the US Supreme Court

Jul 1, 2020

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    Jukka Palm

    I am an  experienced professional in the field of IP law. In addition to trademark matters I have also handled several other types of IP cases like patent and design right disputes. My passion is to provide added value to the client, whether it is better IP strategy, cost savings or other benefit., an enterprise that maintains a travel-reservation website by the same name, sought US federal registration for the mark “”. Concluding that “” is a generic name for online hotel-reservation services, the U. S. Patent and Trademark Office (PTO) refused registration.

    According to US trademark law a generic name - the name of a class of products or services - is ineligible for federal trademark registration even despite secondary meaning acquired through use. “Generic” term names a “class” of goods or services, rather than any particular ”descriptive” feature of a good or service. Descriptive terms are eligible for trademark registration if they enjoy secondary meaning i.e. consumers perceive the name as a trademark due to sufficient use as a trademark.

    In the US Supreme Court's 8-1 decision it was ruled that adding ".com" to a generic word can make the overall combination eligible for trademark registration. 19-46 Patent And Trademark Office v. BV (06/30/2020)

    The court held that whether any given “” term is generic depends on whether consumers in fact perceive that term as the name of a class or, instead, as a term capable of distinguishing among members of the class.

    Following this logic the court ruled that ”because ’’ is not a generic name to consumers, it is not generic.”

    Consumers do not use the combination term “” to refer to the class of hotel reservation websites in ordinary speech (unlike the mere word ”booking”).

    As the mark is descriptive rather than generic, the trademark owner could successfully rely on evidence that showed that 74.8% of participants thought that “” is a brand name, whereas 23.8% believed it was a generic name.

    In the EU the rules relating to distinction of generic and descriptive names differ to some extent. However, BOOKING.COM has been registered as an EU trademark based an acquired distinctiveness since 2011.

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