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Supreme Court Rules that Adding “.com” to a Generic Term Can Result in a Protectable Mark

In Booking.com v. United States Patent and Trademark Office, 591 U.S. ___ (2020), the Supreme Court rejected the United States Patent and Trademark Office’s (PTO) proposed rule that all marks that combine a generic term with an Internet domain name suffix such as “.com” are per se generic and therefore unprotectable. According to the Court, such a “sweeping” rule is inconsistent with the principles of trademark law, and “generic.com” marks can be protectable if consumers recognize the mark as an identifier of the source of certain goods and/or services.

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Inventive Asia: Latest Developments in U.S. Intellectual Property Law


Time to Read: 1 minutes Practices: Intellectual Property

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In the Fall 2019 issue, we discuss the effort now underway in the U.S. Congress to reform subject matter eligibility for patent protection; U.S. Supreme Court review of PTAB appeal practices; a planned increase in USPTO fees; and a growing use of the International Trade Commission that may threaten imports from Asia.

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