Ladas partner Matthew Asbell has been quoted in the World Trademark Review (WTR) in relation to how several amicus briefs submitted to the United States Supreme Court may impact the decision in USPTO v. Booking.com. The case is about whether the combination of the generic term “booking” with the generic top level domain “.com” can ever be considered capable of acquiring distinctiveness and being registered as a trademark. A generic term refers to the entire class of goods and is not capable of being registered because recognizing such rights would allow the owner to enforce them against others who need to be able to refer to goods using the generic term. In contrast, a term that is only merely descriptive, while it does not have sufficient inherent distinctiveness to be registered and recognized as a source-identifying mark by consumers, can acquire distinctiveness after sufficient use over time. The USPTO contends that the mere addition of “.com” to a generic term is not sufficient to prevent the whole mark from being generic. Booking.com argues that the combination “booking.com” is not needed for consumers or other businesses to refer to hotel booking services and that it has built a reputation and substantial recognition of its brand.
The article is accessible to subscribers of the WTR at: https://www.worldtrademarkreview.com/governmentpolicy/how-amicus-briefs-could-sway-scotus-anticipated-bookingcom-ruling
For those wishing to learn more about generic and descriptive trademarks and acquired distinctiveness, see Matthew’s articles on these topics beginning with “The Black Hole in the Distinctiveness Continuum” at: https://ladasparry.wpengine.com/education-center/black-hole-distinctiveness-continuum-u-s-trademark-applications/.