Photo by (Unsplash)

Tiffany Wang is an IPilogue Writer, IP Innovation Clinic Fellow, Intellectual Property Journal Editor, and a 2L JD Candidate at Osgoode Hall Law School.

In the midsummer of 2020, the Supreme Court of the United States rendered an unusual decision in its first . The case, , signals broader protections for trademarks vis-à-vis .

In . The USPTO’s both denied the registration, underscoring that consumers will perceive

Writing for the 8-1 Supreme Court, Justice Ruth Bader Ginsburg affirmed the . Justice Ginsburg underscored that Booking.com is a distinctive business and that the public will not misunderstand the brand. Having acquired sufficient distinctiveness in the marketplace, “Booking.com” moves away from the generic category as a descriptive mark. The distinctiveness of a trademark is measured on the . In the case at hand,

This case finds a fine equilibrium between two factors: enhancing trademark protection and valuing consumer perception. Stronger trademark protection enhances Booking.com’s brand image and goodwill. Granting trademark registration to Booking.com simultaneously enhances the significance of consumer voices. Consumers are able to distinguish the services provided by Booking.com from those of other lodging competitors. 

Practitioners may worry that this case opens the floodgates to trademark litigation. The Supreme Court blurred the . Additionally, Permitting the registration of “generic.com” domain names may lead to .

In an increasingly digital arena, defying clear trademark doctrine may inevitably deplete the USPTO’s authority to prevent an influx of generic marks from entering the marketplace and diluting the value of more distinctive trademarks. The majority underscores that consumers perceive that . Even if the majority reasonably valued consumer data, did the majority err in granting too much weight to public input?

The post The Grand Budapest Hotel – Booking.com appeared first on IPOsgoode.

In September 2006, Hotels.com appealed to the Trademark Trial and Appeal Board (TTAB). After considering the evidence, including of the terms "accommodation", "reservation", "hotels" and ".com", as well as the fact that the term "hotel" is used in several other domain names (for example, web-hotels.com), the TTAB upheld the decision that the term hotels.com was generic. On appeal, Hotels.com argued that the literal element "hotels.com" and the bellman design are unitary and cannot be separated. The TTAB did not focus on whether or not the elements could be separated, but rather declined to find unity because there was a clear distinction between the words and the design, and because the words "hotels.com" frequently appeared , or entirely . Furthermore, the TTAB held that the addition of the ".com" to the generic word "hotel" .

In , Hotels.com submitted of a "national blind telephone survey" to the TTAB in an attempt to overcome the prior ruling. In the telephone survey, answered that "hotels.com" was a brand name. Hotels.com argued that this showed that the term "hotels.com" had become associated with its company and that the term is not viewed by the public as being generic. The TTAB criticized the survey for not clearly determining whether the participants were able to appreciate the difference between a domain name and a brand name. Survey expert t of the TTAB because people tend to assume that since ".com" names can only be used by one company, it must follow that the ".com" name therefore indicates a specific source. The TTAB found the survey evidence and upheld its previous decision. Hotels.com to the U.S. Court of Appeals for the Federal Circuit.

In late July 2009, the United States decided that "hotels.com" is not able to be registered as a service mark, affirming the original decision of the trademark examiner and the TTAB, and the Court held that the TTAB had to make this finding. were surprised by this decision, citing the fact that as a reason why the company should have been allowed to register the mark. As stated by Mr. Poret, this is a common misconception that many people hold - simply because there can only be one owner of a domain name does not necessarily mean that the term legally indicates source. Unfortunately, this is a lesson that Hotels.com had to learn the hard way.

The post "Hotel" is a generic word appeared first on IPOsgoode.