SCOTUS Rejects PTO's Sweeping Rule Denying Registrations for "" Domain Name Marks

In United States Patent and Trademark Office v. B.V., No. 19-46 (June 30, 2020), SCOTUS rejected the PTO's attempt to create a "sweeping rule" of nonregisterability of marks styled "" had sought to register "" marks in connection with travel-related services. The PTO concluded that the term "booking" was generic for travel-related services and thus "" was also unregistrable. Both the district court and Fourth Circuit Court of Appeals disagreed, finding that the combination of a generic term, such as "booking, "with ".com" was not necessarily generic. SCOTUS agreed, holding that a "term styled '' is a generic name for a class of goods or services only if the term has that meaning to consumers." While SCOTUS rejected the PTO's nearly per se rule, it also cautioned that "we do not embrace a rule automatically classifying such terms as nongeneric."

The ruling added needed clarification to the criteria for registering "" domain name marks.

Lerner David is happy to assist you for your U.S. trademark matters.  We have over 50 years of trademark experience with the USPTO handling trademarks for both domestic and foreign companies of all sizes ranging from start-up companies to companies with some of the most famous trademarks in the world.

Slip Op. available at