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Jul 2020
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July 01, 2020

Trademark Rights Fully Available for Domain Names, Supreme Court Rules

In an 8-1 decision on June 30, 2020, the United States Supreme Court decided that “Booking.com” can be registered as a trademark. In so doing, the Court rejected the United States Patent & Trademark Office’s (USPTO) position that would have categorically forbidden registration of marks consisting of a generic word and a top-level domain, such as “.com,” on the USPTO’s Principal Register. 

Speaking for the Court, Justice Ginsburg returned to first principles. The function of a trademark, she wrote, is to:
 

[D]istinguish one producer’s goods or services from another’s. Guarding a trademark against use by others, this Court has explained, “secures to the owner of the mark the goodwill of her business and protects the ability of consumers to distinguish among competing producers.”

Securing the ability of businesses to use identity indicators and protect them from confusion with other marks is the purpose of trademark law, and the USPTO’s Principal Register, regardless of the industry in which the company operates. The owner of a Principal Register trademark enjoys incredibly valuable benefits, including a presumption of validity and ownership of the mark as well as exclusive rights, access to federal courts, statutory remedies and enforcement leverage against cyber squatters and through customs recordal. 

The more distinctive the mark, the more readily it qualifies for the Principal Register. The most distinctive marks—those that are “arbitrary” (‘Camel’ cigarettes), “fanciful” (‘Kodak’ film) or "suggestive" (‘Tide’ laundry detergent)—may be placed on the Principal Register because they are “inherently distinctive.” “Descriptive” terms, in contrast, are not eligible for the Principal Register based on their inherent qualities alone. To qualify for the Principal Register, descriptive terms must achieve significance “in the minds of the public” as identifying the applicant’s goods or services—a quality called “acquired distinctiveness” or “secondary meaning.” At the bottom of the trademark hierarchy and its distinctiveness scale is “the generic name for the goods or services.” The name of the good itself (e.g., “wine”) is incapable of “distinguishing one producer’s goods from the goods of others” and is therefore ineligible for registration. 

Traditionally, the USPTO’s position had been that the combination of a generic word related to an applicant’s industry (e.g., “booking” for hotel services) and the “.com” top-level domain (which, of course, is short for “company”) was per se generic, and thus ineligible for registration. But the evidence in this case—consisting primarily of consumer surveys—showed otherwise. Because only one company can own the domain name, and because Booking.com had heavily invested many resources into building its brand identity, the lower courts found that consumers associated the domain name with a single company and did not use it as a generic reference for the online booking of hotel rooms. 

So what are the Booking.com takeaways for trademark holders? Here are just a few: 
 
  • This decision is a common-sense application of basic trademark principles to the context of internet domain names. 
  • It does not treat domain name marks as exceptional—either automatically entitled to or barred from trademark protection—but, instead, allows and requires brand owners to prove that their particular mark has acquired distinctiveness in the minds of consumers, just like any other mark. 
  • It is good news for companies whose domain name has come to be synonymous with their brand identity. 
  • It is great news for companies that have diligently invested time, money and resources into building a domain name brand identity because they can more readily and easily enforce their rights against infringers trespassing on their trademark rights.   
  • It requires companies to think twice before adopting new domain names for their business. Now, instead of simply asking whether a domain name is available, companies should also determine whether using the domain name in advertising is likely to infringe on the goodwill a competitor has developed in their own domain name. 

If you have questions about this case or would like to explore how to better protect and enforce your trademarks in this competitive environment, please contact Brian Wassom, Mary Bonnema or any member of Warner’s Trademarks and Brand Management team.

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