Jess Collen has been an IP attorney for 30 years and he covered the Booking.com case on Forbes.
Jess did a good job of breaking down what this means for small and mid sized businesses. He also threw in a bonus for owners of true premium one word .coms.
Collen wrote: “That the Trademark Office now must allow registration and that these names have been ruled protectable makes a huge advance in their value.”
He also pointed out that Booking.com is not the first of it’s kind.
The Court also points out that the Trademark Office has already allowed “Art.com” for “online retail store services” offering “art prints, original art, [and] art reproductions” and “Dating.com” for, well, I’ll let you guess.
Read the full article on Forbes.
Exactly. For corporations to spend huge amounts of money for an address, they need to be able to protect them as intellectual property. This opens the door for trademarks to be used as valuable addresses as generic names online. Google owns search, but now corporations have a weapon to leverage and insure that a generic address can be coined as a sticky brand for direct traffic. Everything is about perception. It may very well change the landscape of direct navigation that these prized addresses can be leveraged as corner stones of a business or corporation. Some may try to downplay this but I believe it opens the door in the future for domain names to be be defined as a Right and as Property.
Yes, Art.com, Dating.com and others were allowed, but you were totally at the mercy of the USPTO examining attorney. At best, it was hit or miss. We received a Service Mark for GolfClub.com, but struck out on the others we submitted for Trademark. This Supreme Court decision will make a huge difference.
I think in this case the decision is fair enough, they pump huge amounts advertising and booking.com is a well known brand, good decision.
I recently tried to register my generic dot com, I use for my business, it is an exact match for the product I sell , I was advised it wouldn’t pass as it was too generic, so I had to create a sub brand for it, and add it to the front of the word so it’ basically (insert word) by ( insert generic dot com) and re apply.
I suspect it will be quite a few years if at all before we see smaller ,less well known brands being allowed to register their dot com.
right decision though for sure this time and does open the door slightly for the future.
a TM is a stupid human INVENTION
It’s interesting to see the emphasis put on one one word generics, two & three word generics can have significant more intellectual value for search & marketing, the findings I believe will certainly benefit Domain investors & web site owners with good generic domain names –
BUT under TradeMark laws you Cannot register a Trade Mark which is confusingly similar to an Existing Trade mark or Common Law IP right. Therefor, using an example. If someone/people have a Trade Mark on “Drinks” then “Drinks_com” would be considered “Confusingly similar and would not be granted. Bear in mind though the Geographic Limitations of Trade Marks i.e, US Trademarks are only valid in US)
That said, I can only advise people to avoid like the plague (not the right saying in these times but is a well used saying for decades) ANY trademark or Company in the UK. They seriously are worthless and even though you might be granted one ,they can easily be challenged after registration and you will end up with LESS than NOTHING. Be Warned.
I own thousands of decent to excellent 2 word .coms ,recently contacted by someone who obtained a tm on a dj name that gives him rights to basically anything music. Even though there were actually famous djs in the past using the name I decided to just sell it to him for a few hundred dollars.This domain had been registered 10 years ago,how can someone trademark and make someone’s property be worthless.Is the next best industry To be ,getting trademarks on anything not trademarked and then going around scooping up domains from owners cheap; holding a stupid decision over a domain owner made by a glorified trademark clerk.