United States Patent and Trademark Office v. Booking.com B.V., U.S., No. 19-46, amicus brief filed 1/13/2020.
All documents are in PDF format.
The American Intellectual Property Law Association filed an amicus brief with the Supreme Court today in United States Patent and Trademark Office et al. v. Booking.com B.V., No. 19-46, a case addressing whether the addition by an online business of a generic top-level domain (such as “.com”) to an otherwise generic term can create a protectable trademark.
The brief argues that, pursuant to the Lanham Act, the addition of a generic top-level domain (gTLD) to an otherwise generic term can, under certain circumstances, create a protectable trademark. The entitlement of such a mark to federal protection should be evaluated on case-by-case basis without the application of a per se rule of genericness.
Under the Lanham Act, whether a term is generic is determined by identifying the “primary significance” of that term to the public. When a gTLD is combined with an otherwise generic term, the Patent and Trademark Office must assess the primary significance of the entire mark, not just its individual components.
The brief argues that, in some cases, adding a gTLD to a generic term may create a compound term that merely describes the product or service being offered, but is not itself a generic term. In that situation, an applicant should be afforded the opportunity to show that the term has acquired secondary meaning and become distinctive and source-identifying for the applicant’s goods or services. Further, the recent proliferation of available gTLDs—over 1,000 are currently available—has made it even less advisable to adopt a blanket rule that any gTLD added to a generic term is per se generic.
According to AIPLA, a per se rule that a mark consisting of a generic term and a gTLD is generic should be rejected.
AIPLA 2021 Annual Meeting On-Demand!
May 28 to August 1, 2022 | Virtual Attendees can receive 1,140 CLE minutes, including 90 minutes of Ethics for the on-demand sessions.AIPLA's 2021 Annual Meeting is now available on-demand. View all the sessions presented by some of the best IP professionals in the industry.
2022 Mid-Winter Institute On-Demand
May 28 to July 31, 2022 | 915 on-demand CLE minutes, including 60 minutes of EthicsAIPLA's 2022 Mid-Winter Institute is now available on-demand. In a fast changing world where technologies have followed suit, IP professionals around the world face the challenge of acquiring the right tools to fully protect cutting edge innovations.
2022 Electronic and Computer Patent Law Virtual Summit
June 15 to 16, 2022 | TBDThe Electronic and Computer Law Committee’s June Roadshow has gone virtual! Join us June 15 & 16 as we explore topics relevant to electronic and computer patent law, and earn plenty of CLE credit along the way.
2022 Design Rights Boot Camp - Arlington, VA
June 23 to 24, 2022 | 710 Minutes of CLEThe Design Rights Boot Camp is a first of its kind two-day comprehensive CLE program designed for both new and experienced IP practitioners who wish to learn about protecting and enforcing designs in all areas of IP, including design patents, copyright and trademark dress. Join us for this in-person event!
AIPLA 2022 Annual Meeting
October 27 to 29, 2022To be held at the Gaylord National Resort and Convention Center in National Harbor, MD.