INTA Statement on U.S. Supreme Court Ruling in United States Patent and Trademark Office v. Booking.com

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The International Trademark Association applauds the United States Supreme Court on its June 30 ruling in United States Patent and Trademark Office v. Booking.com. The decision favored the position taken by INTA in its amicus brief filed in this case before the Supreme Court earlier this year.

The International Trademark Association (INTA) applauds the United States Supreme Court on its June 30 ruling in United States Patent and Trademark Office v. Booking.com. In an 8-1 decision drafted by Justice Ruth Bader Ginsburg, the Court ruled that a generic term with the “.com” gTLD can be registrable if the compound term has meaning to consumers.

The decision favored the position taken by INTA in its amicus brief filed in this case before the Supreme Court earlier this year. INTA argued that the Court should consider survey evidence when deciding whether a mark is generic or descriptive and should not be limited to cases involving “coined” terms, that the Court should affirm that there is no per se rule for the protectability of generic marks with the addition of a generic top-level domain (“.com”) for an online business, and that the mark in question is therefore registrable and is not generic.

According to INTA, as more registrations of these compound marks are filed, the extent of enforcement of the mark will need to be clarified. Booking.com BV disavowed an intention to sue marks like eBooking.com. Justice Stephen G. Breyer’s dissent highlights the fear that granting registration to “generic.com” marks will inhibit competition on the Internet. Time will tell whether that warning will stand true.

The implications of the decision were discussed at length in a May 7 INTA TO-GO webcast Booking.com: A Closer Look. The webcast featured an expert panel of speakers who discuss issues that the Court heard in arguments on May 4 in this case. Notably, this was also the first case that the Supreme Court heard by phone.

About the International Trademark Association
The International Trademark Association (INTA) is a global association of brand owners and professionals dedicated to supporting trademarks and related intellectual property (IP) to foster consumer trust, economic growth, and innovation. Members include more than 7,200 trademark owners, professionals, and academics from 187 countries, who benefit from the Association’s global trademark resources, policy development, education and training, and international network. Founded in 1878, INTA is headquartered in New York City, with offices in Brussels, Santiago, Shanghai, Singapore, and Washington, D.C., and representatives in Geneva and New Delhi. For more information, visit inta.org.

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Jean-Claude Darné
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