On June 30, the U.S. Supreme Court held that the company Booking.com could hold a valid federal trademark in the name “Booking.com” even though the term “booking” is a generic term for making a reservation. The case recognizes that the addition of a domain suffix like .com can transform something generic into something descriptive. The case is important for the thousands of companies attempting to establish a presence on the web, and using descriptive domain names to do so.
A trademark — particularly a federally registered trademark — is a word, phrase, color, logo, or other descriptive thing that identifies the provider of goods (service mark is for services). Ford – cars. Dove – soap. Eveready – batteries. It can be a person’s name (McDonalds), a color (say, Yellow for Hertz cars), a logo (Nike swish) or a phrase (I’m lovin it). If you have a trademark, you can prevent others from using the mark or things that are confusingly similar to the mark in a manner that causes a likelihood of confusion. Many people can have the same mark. Kelly tires, Kelly temps, etc., provided there’s no substantial likelihood of confusion.
What you can’t get is a trademark in a generic or descriptive term. Kelly tires, yes. Tires – no. Even things like Park & Fly (or, Park ‘N Fly) is descriptive of the services offered — off airport parking — rather than a phrase subject to trademark.
What the Supreme Court held is that a generic mark – in this case “booking” in reference to hotel or other “booking” services can obtain secondary meaning when coupled with a domain name suffix. So the term “booking services” is generic, as would be “online booking services,” but the term “booking.com” does not itself refer to booking generally, but is considered by the public to mean a specific provider of specific services. The Patent and Trademark Office held that the addition of .com to a descriptive mark was necessarily also descriptive. The Supreme Court disagreed, noting “whether “Booking.com” is generic turns on whether that term, taken as a whole, signifies to consumers the class of online hotel-reservation services. Thus, if “Booking.com” were generic, we might expect consumers to understand Travelocity — another such service — to be a “Booking.com.” We might similarly expect that a consumer, searching for a trusted source of online hotel-reservation services, could ask a frequent traveler to name her favorite “Booking.com” provider. Consumers do not in fact perceive the term “Booking.com” that way…”
It makes a difference because, if the term is essentially generic or descriptive, “no matter how much money and effort the user of a generic term has poured into promoting the sale of its merchandise . . . , it cannot deprive competing manufacturers of the product of the right to call an article by its name.” The owners of the domain “Lawyers.com” can’t keep me from describing myself as a lawyer, even if people identify the term “lawyer” with the site and not the profession. Thus, if you have and promote the domain “wine.com” you can’t keep people from selling wine and calling it so, and the same for other descriptive marks. So what about “booking.com?”
The Supreme Court eschews a blanket ruling that excludes descriptive domains from registration in favor of a case-by-case examination of the scope of such a trademark and alleged infringement. If “booking.com” is a trademark for online hotel booking services, it’s likely that Travelocity or Priceline would not infringe that mark by describing themselves as “online booking services” even though the descriptive word “booking” is in the competitor’s description. It comes down to whether the use of the descriptive language is likely to cause confusion and make people think that the services are being provided by the COMPANY Booking.com rather than by Travelocity or Priceline. On the other hand, if someone were to register and use the domain “bookings.com” and provide competing services, even though “bookings” is also descriptive, it might run afoul of “booking.com” trademark. Got it? If so, congratulations – you have now completed first year Intellectual Property law.
The PTO says that a generic term + .com = generic term. The Supreme Court says, “not so fast.” So I think I’m going to register the domain, “reallysupercoolcyberlawyer.
Mark Rasch is an attorney and author of computer security, Internet law, and electronic privacy-related articles. He created the Computer Crime Unit at the United States Department of Justice, where he led efforts aimed at investigating and prosecuting cyber, high-technology, and white-collar crime.