On June 30, 2020, the Supreme Court rejected the Trademark Office’s per se rule that a generic term plus a top level domain suffix (such as .com) can never function as a trademark and instead adopted a more nuanced rule centered around consumer perception. USPTO v. Booking.com (No. 19-46). In this decision, available here, the Court concluded that consumer perception and classic fair use principles offered sufficient protection against the unfair monopoly concerns of the USPTO. This decision accords with earlier findings of acquired distinctiveness and the corresponding protectability of phone numbers like 1-800-Flowers and 1-800-Mattress. In light of this decision, holders of valuable generic domain names should take another look at the registrability of their brands.
To learn more about the issues raised by this client bulletin, please contact Julia Anne Matheson at firstname.lastname@example.org or Janet Satterthwaite at email@example.com.
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