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The United States Supreme Court issued a key ruling today that will have far-reaching implications for many companies that conduct business on the Internet. The Court ruled that a generic company name with “.com” added to it would be entitled to trademark protection even though the generic name alone would probably not be entitled to such protection.

In this case, Booking.com, a travel accommodations website, attempted to register “Booking.com” as a trademark. The U.S. Patent and Trademark Office denied this registration on the basis that it is a generic name and thus not eligible for trademark protection. The PTO took this position regardless of whether the name had gained a secondary meaning as it appears that the Booking.com name has done.

Booking.com successfully asserted that this name needed trademark protection to prevent competitors from conducting business under a similar name and to prevent brand dilution. The Court specifically referred to consumer perception as a key factor in this case and said that failure to acknowledge consumer perception is incompatible with a “bedrock principle of the Lanham Act” – that the generic or non-generic character of a particular term depends on its meaning to consumers and how consumers perceive it. In this matter the Court ruled that consumers associated the Booking.com name with a specific website, and thus trademark protection for this website name was appropriate.

As a side note, the oral argument for this case was conducted over the phone due to the COVID-19 pandemic. This was the first Supreme Court oral argument conducted over the phone, but probably won’t be the last. This was an 8-1 decision, with only Justice Breyer dissenting on the basis that allowing trademark protection for generic names is not consistent with sound trademark policies or principles.

You can find a link to the Supreme Court’s opinion here.

If you have any questions, please contact Gunster Technology & Emerging Companies practices leader, Robert White.

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This publication is for general information only. It is not legal advice, and legal counsel should be contacted before any action is taken that might be influenced by this publication.


About Gunster

Gunster, Florida’s law firm for business, provides full-service legal counsel to leading organizations and individuals from its 13 offices statewide. Established in 1925, the firm has expanded, diversified and evolved, but always with a singular focus: Florida and its clients’ stake in it. A magnet for business-savvy attorneys who embrace collaboration for the greatest advantage of clients, Gunster’s growth has not been at the expense of personalized service but because of it. The firm serves clients from its offices in Boca Raton, Fort Lauderdale, Jacksonville, Miami, Naples, Orlando, Palm Beach, Stuart, Tallahassee, Tampa Bayshore, Tampa Downtown, Vero Beach, and its headquarters in West Palm Beach. With more than 260 attorneys and consultants, and over 270 committed professional staff, Gunster is ranked among the National Law Journal’s list of the 500 largest law firms and has been recognized as one of the Top 100 Diverse Law Firms by Law360. More information about its practice areas, offices and insider’s view newsletters is available at www.gunster.com.

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