United States Patent and Trademark Office et al. v. Booking.com B.V.
A generic term in combination with a “.com” is not generic, per se. The term may not be generic if its generic components, once combined, act as a source-identifier.
A generic term in combination with a “.com” is not generic, per se. The term may not be generic if its generic components, once combined, act as a source-identifier.
Infringement defendant who sells component part for plaintiff’s end product can use plaintiff’s trademark to show that its product is component part, provided defendant otherwise makes clear to prospective purchasers that part was not made by plaintiff; in present case, defendants’ sales of their replacement grilles for plaintiff’s vehicles, embedded with plaintiff’s “bow tie” and “GMC” designs, are not likely to cause either point-of-sale confusion or “downstream” confusion.
Prima facie case of no inherent distictiveness of a mark as a source identifier does not require the USPTO to show that similar marks or configurations are actually in use in the relevant market.