Haynes and Boone, LLP Partner David Bell talked with World Trademark Review to provide his thoughts on the U.S. Supreme Court decision in USPTO v. Booking.com.
Here is an excerpt of Bell’s quotes in the article:
“I believe the USPTO’s fear is unwarranted for several reasons. The USPTO, during oral arguments, raised the concern that allowing registration to ‘generic.TLD’ marks will effectively flood the US trademark register, such that it becomes a sort of domain name registry. The court’s decision certainly does open the door to registration of more domain names, and I do expect applications for such domain name marks to increase. However, I believe the USPTO’s fear is unwarranted for several reasons.”
Bell also noted: “As the lower courts found and the USPTO conceded, consumers would not consider a domain like ‘travelocity.com’ to be a type of ‘booking.com’. If evidence to the contrary existed, the court’s decision reasonably could have held BOOKING.COM to be generic, but the underlying reasoning and holding likely would have been no different. As Justice Sotomayor stated in her concurrence, whether BOOKING.COM is generic was not before the court. That is, even if BOOKING.COM were a recognised category of booking businesses or websites, it does not follow that, say, ‘furniture.com’ or ‘flowerservice.com’ necessarily has categorical meaning to consumers. Ultimately, as the court has clarified, the inquiry must be a case-by-case one.”
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