Page 14 - Delaware Lawyer - Summer 2020
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FEATURE
consumer of the basic nature of its business and nothing more.
... Today, the Court holds that the addition of “.com” to an otherwise generic term, such as “booking,” can yield a protectable trademark. Because I believe this result is incon- sistent with trademark principles and sound policy, I respectfully dissent.” Slip Op., Breyer, J. dissenting, at 1.
Conclusion
While Congress may not have imag- ined the widespread use of the internet, much less domain names that serve as both web addresses and trademarks that consumers rely upon to locate a single source of goods or services, Con- gress provided a test for determining whether a mark is generic and not en- titled to registration, or descriptive and entitled to registration, at least during trademark cancellation proceedings at
The Court’s decision expanding the “primary” significance” test of the Lanham Act to “consumers’ perception” of the term should be a welcome interpretation for trademark owners and consumers.
the PTO: evaluation of the “primary significance” of the registered mark to the relevant public. The Court’s deci- sion in the Booking.com case expands this test somewhat to “consumers’ per-
ception” of the term, without regard to “primary” significance to consumers, which should be a welcome interpreta- tion of the Lanham Act for both ge- neric.com trademark owners and con- sumers in the internet age.
Ms. Duncan authored an amicus brief on behalf of the Intellectual Property Law Association of Chicago in support of the Respondent, Booking.com N.V., at the Supreme Court.
NOTES
1. U.S. Patent and Trademark Office v. Book-
ing.com B.V., No. 19-46 (June 30, 2020).
2. Booking.com B.V. v. U.S. Patent and Trademark Office, 915 F.3d 171, 186 (4th Cir. 2019).
3. See, e.g., Booking.com B.V., 915 F. 3d at 180 n.6; In re 1800Mattresses.com IP, LLC, 586 F.3d 1359, 1362-63 (Fed. Cir. 2009); In re Reed Elsevier Props., 482 F.3d 1376, 1378 (Fed. Cir. 2007).
4. TMEP § 1215.05 (Oct. 2018).
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