01 July, 2020

This is my Domain - US Supreme Court Decides on the Registration of Generic ".com" Domains as Trademarks

Since the advent of the world wide web, domain names' value to their owners have skyrocketed, with some, such as Google.com, being valued by some at roughly $31 billion. Although the valuation of that domain is a little ridiculous, being able to have the right domain at the right time can in itself create a business opportunity and thus be very valuable. However, domain names and their registration and trademarks has been a hot-button issue for some time, since the inclusion of ".com" along with a descriptive element might not be enough to allow for their registration. The USPTO has had a long-standing position where the inclusion of ".com" with a generic word would render that mark as generic and therefore ineligible for registration. This position has since been challenged, and the matter went up all the way to the US Supreme Court, which handed down its opinion earlier this week.

The case of USPTO v Booking.com BV concerned the registration of the mark "Booking.com" by, you guessed it, Booking.com BV, which is a site specialized in the booking of hotels for travelers. At first instance the mark was refused registration as the USPTO deemed it to be generic under the above rule, meaning the name would only have the descriptive meaning to consumers of the service and would not signify that particular website to consumers. Booking.com challenged the ruling, and ultimately took the matter all the way up to the Supreme Court.

Handing down the majority's judgment, Justice Ginsburg first discussed the registration of trademarks overall, particularly the requirements for a mark to be registered. This includes that the the mark has to be one "...by which the goods of the applicant may be distinguished from the goods of others", i.e. it has to be distinctive. Word marks, such as the domain above, can be distinctive in a sliding scale of sorts, namely (from least to most distinctive)  (1) generic; (2) descriptive; (3) suggestive; (4) arbitrary; or (5) fanciful. A mark will have to achieve distinctiveness specifically "...in the minds of the public".

Justice Ginsburg then moved onto considering whether the mark in question is registrable or not. Booking.com applied to register the domain (and other variants of it, including visual features) as a trademark in relation to travel-related services; however, the application, as discussed above, was rejected at first instance. 

The main question the Supreme Court had to therefore consider is whether the term "Booking.com" is generic, specifically naming "...a “class” of goods or services, rather than any particular feature or exemplification of the class". As the domain is also a compound term (consisting of "Booking" and ".com" as separate elements), the Court would have to consider its meaning as a whole and not in isolation of those parts. Its meaning would have to be considered in the light of its meaning to consumers. In short, as noted by the Court, the consideration is "...whether “Booking.com” is generic turns on whether that term, taken as a whole, signifies to consumers the class of online hotel-reservation services".

The Court quickly noted that under evidence, consumers don't perceive the domain as being generic for hotel-reservation services, and as such, the term cannot be generic. The USPTO argued that, irrespective of that evidence, the term should be seen as generic since when a generic term is combined with a generic top-level domain like “.com,” the resulting combination is generic, barring exceptional circumstances. 

Finally, the Court considered whether the registration of  “generic.com” terms as trademarks would hinder competition, i.e. prevent a competitor from using the term "booking" when describing their services. The Court outright rejected this notion, noting that the risk of deterrence of using a term exists in relation to all descriptive marks. Even if a competitor uses that term, provided it's done in good faith, they would most likely be protected by fair use. 

The Court subsequently affirmed the decision of the Court of Appeals, and allowed the registration of the mark as it was not considered generic.

The case is a very important one, and surprisingly very late into the existence of domain names. It's important for brands that have more descriptive names to be able to potentially register their name as a trademark, particularly if it's in relation to a specific domain that is the heart and soul of that business. Competitors should be adequately protected by fair use and other similar doctrines, allowing for the use of those terms in describing their business, while allowing for sufficient protection of legitimate registered trademarks for those domains. 

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