Last November I published an article about the Supreme Court agreeing to hear an appeal by the U.S. Patent and Trademark Office.
The case centers around Booking.com and their desire to get a trademark on “Booking.com”.
Wendy Davis of MediaPost wrote: The U.S. Patent and Trade Office refused to grant the company a trademark, arguing that generic terms followed by “.com” aren’t trademarkable. Booking.com sued over the decision, arguing that it is entitled to a trademark because consumers recognize its name as a brand.
A trial judge and appellate court sided with Booking.com on the matter which is why the USPTO appealed to the Supreme Court.
Interestingly there are several companies siding with Booking.com. Wendy Davis points out in here headline that Home Depot and Salesforce are backing Booking.com.
Farther down the article it turns out the ICA filed a friend-of-the-court brief on behalf of Booking.com.
From the article:
“The Government’s proposed rule would … eliminate critical legal tools for combatting cybercriminals who misuse domain names for fraudulent ends,” the group writes. “Two of the most common malicious activities involving the DNS are typosquatting and domain name hijacking. These abuses are most readily thwarted through trademark law.”
The Supreme Court will hear the case on March 23.
In the article I published in November Michael Castello mentioned he tried to get trademarks back in the day.
I dealt with this in 1997. I was trying to trademark my generics and it was impossible. I could only get @cost on the secondary registry. Will be interesting to see how the SCOTUS rules on this one.
Tip of the cap to Lox
IPwatchdog.com has an article out 10 days ago on the case.
From the article:
A second report by Dr. Sarah-Jane Leslie, a Princeton professor with expertise in linguistics, said that, “even if ‘booking’ and ‘.com’ were generic terms in isolation, consumers would not necessarily understand BOOKING.COM to refer to all hotel-reservation services.”
The company also showed evidence of its “reputation, marketing, and commercial success” to further its case.
More broadly, the brief explains that a finding for the USPTO could result in “a mass extinction event for registered trademarks,” since the Office has “spent decades registering marks that violate the government’s rule that a generic root term, coupled with ‘Company’ or ‘.com,’ can never be a trademark.”