In our previous article here, we covered the U.S. Supreme Court’s decision in United States Patent and Trademark Office v Booking.com B.V. and its potential impacts on the evaluation of Canadian trademarks. The case rejected a rule that trademarks with a generic term followed by a top-level domain (e.g. “.com”) would be automatically considered generic and thus unregistrable.

The USPTO has issued guidance incorporating the Supreme Court’s decision regarding “generic.com” trademarks. Specifically, the guidance advises examining attorneys to not initially refuse registration of such trademarks as generic. Instead, examining attorneys should consider whether there is sufficient evidence that the “generic.com” trademark has acquired distinctiveness so as to warrant protection.

Read the USPTO guidance here.