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ARTICLE · 08 JULY 2020

SCOTUS Alert: Adding ".com" To A Generic Term Can Be A Trademark

Frankfurt Kurnit Klein & Selz PC
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The U.S. Supreme Court decided last week that adding ".com" to a generic name can indeed create a protectable trademark. The 8-1 majority decision in United States Patent...

United StatesIntellectual Property
Craig Whitney
Craig Whitney
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The U.S. Supreme Court decided last week that adding ".com" to a generic name can indeed create a protectable trademark.  The 8-1 majority decision in United States Patent and Trademark Office v. Booking.com B.V., authored by Justice Ginsburg, rejected a proposed rule advocated by the U.S. Patent and Trademark Office (USPTO) that adding a top-level domain (such as .com) to a generic word is per se generic-and therefore unprotectable as a federally registered trademark.  Put differently, the Court's decision holds that even though a term such as "toys," for example, is generic for playthings and cannot function as a trademark, "toys.com" could be protectable, provided consumers associate it with a particular source and do not primarily use it generically to refer to any online toy seller.  Many practitioners advocated for this result, including yours truly on behalf of the American Intellectual Property Law Association (AIPLA).  

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This post first appeared in Frankfurt Kurnit's Focus on the Data blog (www.focusonthedata.com). It provides general coverage of its subject area. We provide it with the understanding that Frankfurt Kurnit Klein & Selz is not engaged herein in rendering legal advice, and shall not be liable for any damages resulting from any error, inaccuracy, or omission. Our attorneys practice law only in jurisdictions in which they are properly authorized to do so. We do not seek to represent clients in other jurisdictions.

Originally published by the New York Legal Ethics Reporter

www.fkks.com

This alert provides general coverage of its subject area. We provide it with the understanding that Frankfurt Kurnit Klein & Selz is not engaged herein in rendering legal advice, and shall not be liable for any damages resulting from any error, inaccuracy, or omission. Our attorneys practice law only in jurisdictions in which they are properly authorized to do so. We do not seek to represent clients in other jurisdictions.

www.fkks.com

This alert provides general coverage of its subject area. We provide it with the understanding that Frankfurt Kurnit Klein & Selz is not engaged herein in rendering legal advice, and shall not be liable for any damages resulting from any error, inaccuracy, or omission. Our attorneys practice law only in jurisdictions in which they are properly authorized to do so. We do not seek to represent clients in other jurisdictions.

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