U.S. Supreme Court docket guidelines that “Reserving.com” is just not a generic time period if “it isn’t a generic identify to customers”
The Court docket famous there aren’t any higher issues related to the registration of “BOOKING.COM” than with the registration of different descriptive marks
Even when a descriptive mark is weak, that doesn’t disqualify it from federal registration
On June 30, the U.S. Supreme Court docket dominated in United States Patent & Trademark Workplace v. Reserving.com B.V. that the web journey reservation area “BOOKING.COM” is eligible for federal trademark registration.
On behalf of the 8-1 majority, Justice Ruth Bader Ginsburg rejected the U.S. Patent and Trademark Workplace’s (USPTO) per se rule that the mix of a generic phrase and “.com” is or have to be a generic mixture. Justice Ginsburg stated, “Whether or not any given ‘generic.com’ time period is generic, we maintain, depends upon whether or not customers actually understand that time period because the identify of a category or, as a substitute, as a time period able to distinguishing amongst members of the category.” (Emphasis added.)
Solely distinctive marks qualify for the principal trademark register. As such, Reserving.com had been denied 4 separate registrations related to the time period BOOKING.COM. In rejecting registration, the USPTO reasoned that the time period BOOKING.COM is generic.
Even whether it is thought of descriptive, the USPTO reasoned that the time period wouldn’t be registrable as a result of it lacks the requisite acquired distinctiveness, or “secondary which means.” In response, Reserving.com sought overview within the U.S. District Court docket for the Jap District of Virginia and provided proof of such a secondary which means. Each the District Court docket and the U.S. Court docket of Appeals for the Fourth Circuit dominated in Reserving.com’s favor.
The Supreme Court docket’s evaluation is rooted within the language of the Lanham Act and its examination of a mark vis-à-vis “the related public” as “the take a look at for figuring out whether or not the registered mark has grow to be the generic identify of products and providers.” Discounting the USPTO’s concern that allowing registration would hinder others of their proper to make use of the time period “reserving” and unduly management their use of comparable language, the Supreme Court docket concluded that such a “concern attends any descriptive mark.” A descriptive mark could also be weak; however its aggressive drawback doesn’t “inevitably disqualify” it from federal registration.
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