Trademark Office Issues Guidance for Post-Booking.com World

The U.S. Patent and Trademark Office issued guidance for examiners in light of the Supreme Court’s Booking.com decision, which overrode past agency policy.

Trademark examiners must carefully review evidence of consumer perceptions from applicants seeking to register marks consisting of a descriptive or generic term followed by a top level domain like ".com.”

Generic terms—terms synonymous with a category of goods—can’t be trademarks generally, but the court struck down a PTO rule explicitly barring registration of generic web marks like Booking.com.

The guidance reflects the Supreme Court’s holding that the PTO’s bright-line rule is inappropriate. But applicants seeking generic.com trademarks ...