By: Jeremy Ulm
While the Supreme Court has made many important and eye-catching decisions in this session, the Court’s ruling in United States Patent and Trademark Office v. Booking.com B. V. may be one of the most impactful for entrepreneurs and small businesses. The Court held that domain names using a generic mark followed by a top-level domain indicator (.com, .org, etc.) may qualify for trademark protection. This ruling opposes the USPTO’s stance, and the accepted trademark law convention, that the addition of a top-level domain indicator does not alter the distinctiveness of a mark.
What is a generic trademark?
One of the requirements for trademark protection under the Lanham Act (the statute that governs modern-day trademark law) is that the mark must be distinctive. Distinctive marks identify the specific source of the product, while generic marks merely identify the type of product. Consider the difference between a unique and distinctive mark such as “Apple Computers” and a generic mark such as “Computers.” A generic mark cannot receive trademark protection, creating a high level of importance for the classification of a mark. In the Booking.com case, both parties acknowledged that the term “booking” on its own is generic, as it merely identifies the type of services provided. This leaves the question of whether a mark is still generic when the .com indicator is attached.
what does the .com indicator actually communicate to consumers?
Prior to the Booking.com ruling, the .com indicator did not affect the distinctiveness, and therefore the protectability, of a mark. Even before Congress passed the Lanham Act (the statute that governs modern-day trademark law), the Supreme Court had held that the addition of a business designation (Inc., company, etc.) to the end of a mark did not impact the mark’s ability to indicate the product’s source. Similarly, the .com indicator, abbreviating “commercial”, had been accepted to not change the distinctiveness of a mark.
While that is all well and good in a theoretical or academic setting, trademark law has evolved to incorporate a practical element of consumer understanding. For an average consumer, a domain name can be much more than the letter that they type into their computer. The domain name tells consumers where they are on the internet, and who controls the space that they have entered. When a consumer goes to “generic.com”, they would not expect to be taken to a website offering goods from all producers of the generic class of goods. They would expect to be taken to the website of a specific producer of that class of goods because they know that only one entity can own and control that domain name.
domain names vs. trademarks
Generally speaking, what separates trademarks from mere words and descriptions is how the words are used.
If the words are being used to indicate the source of a good or service, then it is being used as a trademark. This principle applies to domain names as well. A domain name may be used to tell you the owner or source of the website that you are visiting, or it may just serve as the digital address of that website. What separates Booking.com from many other “generic.com” websites is the incorporation of the .com indicator into their branding (see image above). In advertisements, the company is consistent with using the entire Booking.com name and even incorporates the .com indicator into its slogan, “booking dot yeah.” This helps them separate Booking.com from other hotel booking websites, and ultimately created the consumer impression that led to their Supreme Court victory.
what did the court really change?
It is unclear how the Court’s decision will impact the USPTO’s policies on granting trademarks to “generic.com” applicants. The Court made it clear that they weren’t telling the USPTO that all “generic.com” domain names are now deserving of protection, just that there is the possibility that consumers may come to associate “generic.com” with a specific brand to the point that it deserves protection. Keep in mind, however, that the Supreme Court gave the USPTO flexibility in how they determine which “generic.com” marks make it over that hurdle. In a footnote, Justice Ginsburg even mentions that dictionary definitions and the plain understanding of the mark may determine its status, which does not differ from the USPTO’s logic in classifying “generic.com” marks as generic up to this point.
what does this mean for your business?
Unfortunately, it is too soon to give a concrete answer to that question. The Supreme Court has opened the door for the protection of “generic.com” domain names, but that doesn’t necessarily mean you can just walk on in. There are however practical considerations to be made in the aftermath of this case.
if a competitor trademarks “generic.com”
- Fair use still applies. Booking.com may have a trademark on that name, but that doesn’t mean that you can’t still use the term “booking” to describe the services that your website offers.
- Trademark infringement still requires a likelihood of consumer confusion. Even if you use “booking” in your domain name, there are ways to separate yourself from the trademark of Booking.com.
- Generic.com is still a weak mark. Consumers are much less likely to see the use of a generic term within a domain name and immediately associate it with the trademark holder. Ebooking.com and Booking.com are sufficiently different to avoid confusion, given the generic and necessary nature of the word “booking.”
if You own the “generic.com” domain name
- Now is your chance to protect that domain name with a trademark. While the rights to a domain name on their own are substantial, additional protection of your intellectual property is always preferable. Keep in mind that getting the trademark is still far from a guarantee and that you will have to show what makes your “generic.com” more than just a generic .com.
- Build your brand around the .com indicator. A travel company named “Booking” would have no chance of trademarking that name as it is clearly generic in the field. By building their brand around the name “Booking.com” as a whole, their business has found a way to transform their generic mark into a protectable trademark. You may be able to as well, but only if you put in the work to make your domain name its own brand.
Jeremy Ulm, at the time of this post, is a rising third-year student at Penn State Dickinson Law. He is pursuing an Entrepreneurship Law Certificate with a Transactional Concentration. He is also a Comments Editor for the Dickinson Law Review. To contact him, send emails to Jgu2@psu.edu
Sources
United States PTO v. Booking.com B.V., 2020 WL 3518365 (2020).
Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U. S. 598 (1888).
- 7:17.50.Internet domain names, 1 McCarthy on Trademarks and Unfair Competition § 7:17.50 (5th ed.).
- 25A:11.The nature of internet domain names, 5 McCarthy on Trademarks and Unfair Competition § 25A:11 (5th ed.).
Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4 (2d Cir. 1976).