CRS Legal Sidebar via LC – Isn’t It Generic: Supreme Court to Consider Whether Web Addresses Using Generic Terms May Be Trademarked – June 2, 2020: “What can be trademarked? On May 4, 2020, in its first telephonic oral argument ever, the Supreme Court heard arguments addressing this question. Generally, trademarks protect the goodwill that a company has built in a “distinctive”name or mark. Whether a mark is distinctive can depend on a number of factors, but, under long-standing trademark principles, a “generic” mark is never distinctive and therefore may not be protected under trademark law. A mark is generic if it is the “common name of a product” or “the genus of which the particular product is a species.” For example, one could not trademark the name “LITE BEER for light beer, or CONVENIENT STORE for convenience stores.”Booking.com, a hotel reservation company, applied to the U.S. Patent & Trademark Office (PTO) for a trademark on its business name, BOOKING.COM. The PTO denied the application, but the U.S. Court of Appeals for the Fourth Circuit (Fourth Circuit) held that BOOKING.COM is a protectable mark. In PTO v. Booking.com, the Supreme Court is poised to address the question whether combining two generic terms can result in a protectable, distinctive trademark. Specifically, the case presents the question whether “the addition by an online business of a generic top-level domain (‘.com’) to an otherwise generic term can create a protectable trademark.”This Sidebar will discuss the relevant legal background before addressing potential implications for Congress…”