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.”
Well I am sure glad I am not a member of the ICA. I don’t think most domainers support this bullshit, so do the lowly domain investor members know they are supporting this?
Not cool with the internet commerce association supporting this tm claim. Not a good look.
ICA is nonsense.
Now imagine losing your generic typos to the trademark owners. Fun times.
You can read about the ICA’s Supreme Court brief in this post from February 19, 2020 on its website: https://www.internetcommerce.org/internet-commerce-association-files-supreme-court-brief/.
A link to the brief is also available there, which fully explains the position that the ICA took after considerable deliberation.
As you will read, the current status quo – i.e. *how things stand right now* – is that with enough advertising and promotion, a generic.com domain name is capable of possibly becoming distinctive and thereby entitled to trademark protection. The brief supports the *current* status quo. The USPTO wanted to create a rule that this could *never* happen.
When you hear and see Bookings.com do you think that it is a brand identifying a particular company, or do you think that it is a generic term? If you have been exposed to enough advertising and promotion of the brand, it is likely that it is the former rather than the latter.
Nevertheless, it is difficult to get a trademark for a generic.com now, and that is the way it should be. Moreover, getting a trademark on a generic domain name through massive advertising and promotion over time should not provide the registrant with a wide scope of enforcement. They would be entitled to protect their brand but not take the generic word out of circulation.
Nevertheless, it is indeed a difficult issue and that is why it reached the Supreme Court of the United States. The Court will hear all perspectives on this and hopefully reach the right balance. I respect that there are other ways of looking at this and that is what makes taking a position on an important and interesting issue like this so difficult.