Does adding “.com” create a trademark? USPTO v. BOOKING.COM

Does adding “.com” create a trademark? USPTO v. BOOKING.COM

A trademark is a word, phrase, symbol, or design that distinguishes products from one company from products of another company.  Trademark law generally allows the owner of a trademark to exclude others from using a trademark that may lead to consumer confusion about the seller of a product.  If someone other than the owner of a trademark brands good with the trademark in a way that leads to consumer confusion that can be considered trademark infringement.  The likelihood that a plaintiff in a trademark infringement will be successful depends on a number of factors including, the strength of the trademark and whether it has been registered.  Registration of a trademark with the United States Patent and Trademark Office will strength the rights associated with the trademark, however registration is not something that is guaranteed.

In the United States trademarks are divided into five categories: Fanciful, Arbitrary, Suggestive, Descriptive and Generic.  Fanciful, Arbitrary, Suggestive are easier to register as trademarks.  Descriptive marks can be registered if the trademark owner can demonstrate that the trademark has acquired a secondary meaning.  Generic marks cannot be registered as trademarks.  Generic marks are the name of the product itself or so closely related that consumers no longer thing of a trademark as a brand, they think of it as the name of the product.  People familiar with trademark law know that use of a trademark must be carefully policed so that a popular trademark does not become generic.

The question then becomes, does a generic mark travel in two directions?  Can a business choose a generic mark and create such a strong consumer association between the generic mark and the user of the trademark that the generic term can be registered as a trademark?  The United States Patent and Trademark Office Trademark Manual of Examining Procedure indicates that when a trademark is considered generic, the door is closed to registration forever, however there are those who would try.

United States Patent and Trademark Office v. B.V., 19-46 (USSC 2019) is an example of a trademark owner attempting to register a term that could be considered generic as a trademark.  The main issue in this case is whether, when the Lanham Act states generic terms may not be registered as trademarks, the addition by an online business of a generic top-level domain (“.com”) to an otherwise generic term can create a protectable trademark.

The Respondent in this case operates a website that allows users to register for hotels, plane tickets and various other services.  A common slang term for the process that the website enables is “booking”.  When a person purchases airlines tickets it is common for them to say the “booked” a trip.  In 2018 the company had revenue of over $14.5 billion USD so naturally, the Respondent wanted to protect its trademark by registering it with the United States Patent and Trademark Office.  The USPTO refused registration. The USPTO concluded that the term “booking”
is generic for the services as to which respondent sought registration, and that the addition of the generic top-level domain “.com” did not create a protectable mark.

The Respondent appealed the USPTO decision to the United States District Court for the Eastern District of Virginia.  The District Court held that the term BOOKING.COM was non-generic. The USPTO appealed to the Court of Appeals for the Fourth Circuit, which affirmed the District Court.  The United States Supreme Court has now agreed to hear the USPTO’s appeal.

This will be an interesting case to watch because it will have a lasting impression on how generic words used for websites are treated by trademark law.  On one hand, it isn’t fair to let a company buy a generic work domain name and turn it into a trademark.  On the other hand, if consumer sentiments changes drastically, why not allow generic words to be turned into trademarks if the trademark rights are limited to the context of a domain name?

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