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Should I File for My Trademark + '.COM?' It Depends

In an 8-1 decision delivered by Justice Ruth Bader Ginsburg in the much-anticipated BOOKING.COM case, the U.S. Supreme Court has held that in some circumstances, a generic word combined with “.com” can be a protectable trademark.

Generic marks are not eligible for trademark protection and are not actually marks at all. Instead, they are essentially the name for the product/service or type of product/service at issue. For example, words like SCREENWIPE cannot be registered in connection with cloths for cleaning screens, and BUNDT cannot be registered in connection with cakes. These words are generic in that they do not identify a source, but the actual product/service or type of product/service being offered, so no one person can claim exclusive rights to these words. 

The Booking.com dispute dates back to 2012, when Booking.com filed a U.S. trademark application for the mark BOOKING.COM, which was refused registration on the grounds of genericness. Back-and-forth fighting over the mark culminated in a U.S. Supreme Court case, which was argued via live teleconference for the first time in the history of the Court due to coronavirus social distancing protocols.

In the decision, which came down on June 30, the Court held that consumers do not consider “Booking.com” to signify online hotel reservation services as a class, so BOOKING.COM is not a generic mark and can be eligible for federal trademark registration. The Court went on to explain that if “Booking.com” were generic as the Trademark Office claimed, consumers would consider Travelocity, for example, to be a “Booking.com.” If truly generic, a consumer searching for a trusted source of online hotel reservation services would ask someone to name her favorite “Booking.com” provider. Neither of these are true though, as consumers do not in fact perceive the term “Booking.com” in this way, so the mark is not considered generic.

What does this mean for trademark owners?  First off, it does not mean that companies are now able to add “.com” to any generic word to create a protectable trademark. Nor can a third party add “.com” to your own protectable marks and create a separate mark that does not infringe upon your rights. Instead, if you are using a term or phrase that would be considered generic but adding “.com” so consumers perceive it to be a source identifier, like with BOOKING.COM, then the mark as a whole could be protectable. Companies should review their own portfolio of marks and determine if they have any marks that would previously have been thought to be unprotectable generic terms, but may have added elements like .COM that could allow for protection under the Supreme Court’s holding. 

Has your mark acquired what is known as secondary meaning? In other words, can the company show that consumers have come to recognize the mark as a brand that points to a single source of goods or services? This can be proved through consumer surveys, dictionary definitions, usage by consumers and competitors, and any other source of evidence bearing on how consumers perceive a term’s meaning. As a general practice tip, trademark owners should try to keep records of this type of evidence over time in order to more easily compile proof of consumer recognition, should the need ever arise.

© 2020 Dinsmore & Shohl LLP. All rights reserved.National Law Review, Volume X, Number 183

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About this Author

Sara Suleiman Patent Lawyer Chicago Dinsmore
Associate

Sara is an experienced intellectual property attorney focusing on trademark, copyright and advertising matters.  She counsels clients of all sizes and industries, including major retailers, technology start-ups, financial institutions, pharma and medical device companies, marketing agencies, artists and journalists. She manages U.S. and foreign trademark portfolios, overseeing trademark clearance, prosecution, licensing and policing. Sara identifies trademark risk connected with global product roll-outs and handles brand enforcement such as domain name recovery, social media take-down...

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