United States Patent and Trademark Office v. Booking.com B.V., U.S., No. 19-46, amicus brief filed 1/13/2020. January 13, 2020

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.