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ARTICLE · 02 NOVEMBER 2020

USPTO Issues Guidance On Examination Of Generic.com Terms

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In June of this year, the US Supreme Court ruled that a proposed mark consisting of the combination of a generic term and a generic top-level domain, like ".com," is not per se generic.

United StatesIntellectual Property
Daniel Yannuzzi
Daniel Yannuzzi
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In June of this year, the US Supreme Court ruled that a proposed mark consisting of the combination of a generic term and a generic top-level domain, like “.com,” is not per se generic. (USPTO v. Booking.com). In response, the United States Patent and Trademark Office (USPTO) recently issued Examination Guidelines for examining such “generic.com” terms.

This all began when the USPTO originally refused to register the proposed mark BOOKING.COM, asserting it was generic with respect to hotel reservation services or, alternatively that it was merely descriptive and had not acquired distinctiveness. The Trademark Trial and Appeal Board affirmed the refusal, but the district and circuit courts ultimately ruled in favor of the applicant. In Booking.com the SCOTUS focused its review on the question of whether the USPTO may employ a nearly per se rule against trademark protection for a generic term combined with a top-level domain (i.e., “.com”).

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