Page 8 - Delaware Lawyer - Summer 2020

FEATURE
Margaret M. Duncan
The Supreme Court’s
Can a generic word combined with ‘.com’ be registered as a valid trademark?
On June 30, 2020, the United States Supreme Court held that the test for determining whether a generic word combined with ‘.com’ can be registered at the United States Patent and Trademark Office (“PTO”) is to review consumer perception of the mark. If consumers associate a mark, such as a generic.com, with a source of the goods or services offered under the mark, rather than a term for the class of goods or services, then the mark should be entitled to registration at the PTO.1
6 DELAWARE LAWYER SUMMER 2020
Previously, on May 4, 2020, in the first-ever oral argument conducted by telephone at the Supreme Court,
the justices evaluated the following question:
“Under the Lanham Act, 15 U.S.C. 1051 et seq., generic terms may not be registered as trademarks. The question presented is as follows: Whether the addition by an online business of a generic top-level do- main to an otherwise generic term can create a protectable trademark.” This question may seem straightfor-
ward, as the PTO argued in its open- ing argument: “It is a fundamental principle of trademark law that a party cannot obtain a trademark for a generic term.” However, based on the ques- tions raised during the oral argument and Justice Breyer’s dissenting opin- ion, the justices found the issues more complex and nuanced than they appear at first glance.
Background
Booking.com filed trademark ap- plications at the PTO to register its service mark “BOOKING.COM” for
Booking.com Decision