Tennessee IP Law Blog

United States Patent & Trademark Office v. Booking.com B. V., 20 Cal. Daily Op. Serv. 6243 (U.S. June 30, 2020) https://www.portfolio.hu/en/business/20200520/hungary-slaps-record-fine-of-eur-7-million-on-bookingcom-432994 Topic: Trademark Registration, Generic Names, Compound Terms Read the Majority Opinion in Part I  Here. In an 8-1 decision, the Supreme Court held that a "generic.com" name is ineligible for trademark protection unless the "generic.com" name itself has meaning to consumers.  Justice Breyer argues that consumers can be easily confused and argues to adopt the Goodyear  standard argued by the USPTO. Goodyear  found that adding a company designation (ex. "Company," "Corp.," "Inc.") to a generic term does not yield a protectable compound term. Goodyear  found that adding a company designation merely indicates corporate form and does not distinguish one corporations' goods/services from another. Justice Breyer argues...

United States Patent & Trademark Office v. Booking.com B. V., 20 Cal. Daily Op. Serv. 6243 (U.S. June 30, 2020) Topic: Trademark Registration, Generic Names, Compound Terms Takeaways: A generic name is ineligible for federal trademark registration. If a compound name that is a generic composite is not perceived as generic to consumers, it is not generic in terms of a Trademark filing. Supreme Court finds against the PTO's request for a "nearly per-se" rule that when a generic term is combined with an internet-domain suffix (like ".com"), the resulting combination is generic. Held: 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. Check back next week for Part II on the Concurring and Dissenting Opinions. Opinion Justice GINSBURG delivered the opinion of the Court. This case concerns eligibility for federal trademark registration. Respondent Booking.com, an enter...