AIPLA Argues That A Generic Term Combined With a gTLD Can Create a Protectable Trademark

The addition of a generic top-level domain (gTLD) to an otherwise generic term can, under certain circumstances, create a protectable trademark, the American Intellectual Property Law Association said in an amicus brief filed with the Supreme Court on January 13, 2020. United States Patent and Trademark Office v. Booking.com B.V., U.S., No. 19-46. The brief argues that entitlement of such a mark to federal protection should be evaluated on a case-by-case basis without the application of a per se rule of genericness.

The brief argues that, in some cases, adding a gTLD to a generic term may create a compound term that merely describes the product or service being offered, but is not itself a generic term.  In that situation, an applicant should be afforded the opportunity to show that the term has acquired secondary meaning and become distinctive and source-identifying for the applicant’s goods or services.