Supreme Court Update – Intellectual Property

supreme court intellectual property

Supreme Court Update – Intellectual Property

US Patent & Trademark Office vs. B.V

May 5, 2020

The Supreme Court made history this week by livestreaming oral arguments in the case of US Patent & Trademark Office (USTPO) vs. BV, a popular hotel bookings website. Counsel and the Justices attended the call via teleconference, in light of the ongoing suspension of in-person hearings due to the novel coronavirus.

The question presented was whether the addition by an online business of a generic top-level domain (.com or similar) to an otherwise generic term (like “booking”) can create a protectable trademark. The Lanham Act (15 USC 1051, et. seq) prohibits trademarking generic terms, in accordance with longstanding precedent (like Goodyear Rubber, Co. (1888)) that simply adding a generic identifier like Co., Inc., or Corp., is insufficient to render a generic term descriptive, even if the public has come to identify a particular product with that generic term.

The Supreme Court heard the case on appeal by the USPTO from the 4th Circuit Court of Appeals. argued, based on persuasive fact evidence, that the public had come to see primarily as a brand, distinct from the generic “booking”. The USTPO countered that a generic word cannot ever become “specific”, and therefore eligible for trademark protection, even if becomes associated with a particular brand because of long-usage.

The decision is likely to be handed down in June. Clients should continue to be aware that choosing business names and brand-development decisions can have long-term implications for intellectual property protection. Clients should seek advice from an IP attorney early in their business planning process.


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