EFF often criticizes the Patent and Trademark Office (PTO) for granting bad patents, but a case in the Supreme Court has us on the same side.
On Monday, EFF filed an
The case started in 2016, when Booking.com sued the PTO for refusing its trademark application on the basis that Booking.com is a generic term for the services it provides. Generic terms refer to categories or classes of things that cant be trademarked because of the effect on free speech and competition. For example, you wouldnt want Apple to have a trademark for the word computer, because other computer manufacturers should be allowed to accurately describe their products. However, a lower court judge decided that adding the .com to the end of the generic word booking made it eligible for trademark protection. Last year, an appeals court agreed.
The PTO rightly took its case to the Supreme Court. In our brief, we argued that granting a mark like this would hurt both consumer rights and competition. For example, there are a number of companies with domain names like ebooking.com and bookit.com. Even if the names are not identical to Booking.com, they could be at risk of lawsuits under trademark liabilitys likelihood of confusion standard. Additionally, a win for Booking.com would likely kick off a flood of additional trademark requests for combinations of generic words and top-level domains, leading to even more uncertainty and drawn-out court cases.
The Supreme Court has granted certiorari and will likely hear oral arguments in the case later this year. We hope the justices recognize that the PTO had it right: generic words with .com at the end dont deserve trademark protection.