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SMU Science and Technology Law Review

Abstract

By choosing a generic Internet domain as a brand name, that brand can hit the Internet jackpot. But the popularity and use of a generic domain name creates tension with trademark law. While companies want to be easily found on the Internet, they also want to protect themselves from competitors. This Case Note argues that the Supreme Court’s ruling in United States Patent & Trademark Office v. Booking.com B.V. is the best possible outcome in protecting brand’s rights and balancing trademark law principles. Through the analysis of past cases, the Supreme Court decision in Booking.com itself, and trademark law principles, this Case Note explores why the Supreme Court was correct in rejecting a per se rule and allowing for trademark eligibility with a showing of secondary meaning.

The Supreme Court’s ruling is the best possible outcome because (1) it allows for a case-by-case analysis; (2) it follows the heart of the Lanham Act by reflecting consumer perceptions and brand investment; (3) it subjects eligibility to trademark limitations such as fair use and likelihood of confusion; and (4) it keeps up with changing technology. Although seemingly controversial, the outcome of this case must be viewed against the necessity for law to keep up with the times, especially when it comes to changing technology. Without this ruling, a whole sector of businesses and people would be ineligible to obtain the benefits of their investment and would be unable to protect their investment in the same way others are able to.

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