In a game-changing decision on June 30, 2020, the Supreme Court decided that Booking.com is capable of achieving U.S. federal trademark registration because it proved that the term, “Booking” plus “.Com” served as a trademark source identifier capable of achieving U.S. federal trademark registration. It was U.S. Trademark policy for years that one could not claim a generic term with the TLD as part of the mark and it will remain policy unless it can be proven that consumers identify the domain name as the source of the products or services.
We asked Karen Bernstein, a New York based intellectual property attorney and our long-time lawyer, to give us a better explanation on what does this mean and what big implications this decision may have:
Karen, thanks for doing this interview and helping us.
Q: People, in general, connect many generic domains with certain services. That’s what Booking.com proved through a survey of their customers and that helped the Supreme Court to make a decision. But can all owners of generic domain names now also ask for trademark protection?
Karen: Thanks for asking me. The answer to your question is that the Booking.com Supreme Court decision did not open the door to allow all generic domains to be registered. What the decision says is that a generic term coupled with a TLD is not automatically generic but may be capable of registration provided that consumers perceive the mark as a source indicator.
Q: Booking.com is not the only example of trademarking a generic domain. Hasn’t the Trademark Office already allowed some domain names to be trademarked like art.com and dating.com? Why is this now so different?
Karen: Yes, the Trademark Office has allowed some domains like art.com and dating.com to be trademarked but they couldn’t claim the .Com as part of the trademark because the Trademark Office took the view that .Com was short for “commercial” like “Corp” is short for “corporation. What’s different now is that the law now says that not all generic names plus .Coms (or TLDs) are capable of trademark rights, so the Trademark Office can’t automatically reject a claim to a generic name plus a .Com (or TLD). Indeed, the Supreme Court held that Booking.com is a descriptive mark, not a generic one.
Trademarks run on a scale of strength. So, a made up or coined term like “Quora” is the strongest type of trademark; a suggestive trademark is the second strongest type of trademark like “Jaguar” for a fast sportscar because it takes some imagination for the consumer to make the connection between the idea of a fast sports car with a fast animal; and an arbitrary trademark is one that has nothing to do with the products or services being offered. A classic example is Apple for computers.
Then there are descriptive marks, which immediately convey to prospective purchasers what is being offered like “5 HOUR ENERGY DRINK” for energy drink shots that last for 5 hours because it doesn’t take a lot of imagination to know what is being offered. And then there are generic terms that can never be capable of identifying a source for its products or services like “pizzeria” for, guess what, a place that sells pizzas.
So, to answer your question, it’s all about what products or services are being offered with the trademark in determining the strength of a trademark.
Your example of art.com is instructive. Art.com owns trademark registrations for things like “Online retail store services, mail order catalog services, and catalog ordering services all featuring note cards, signs, plaques, magnets, mirrors, calendars, photo frames, and t-shirts” and “computerized custom framing of artwork.” Art.com was able to prove that although its trademark is descriptive it acquired “secondary meaning” because it had been using the domain for more than five years. “Acquired distinctiveness” or “secondary meaning” means that the mark has become associated with a single source of goods or services among relevant purchasers. The Trademark Office accepted the argument that art.com is descriptive (and not generic) because it doesn’t sell art. If it did, then art.com would be considered a generic term.
Interestingly, the Trademark Office initially refused registration of dating.com because it thought the mark was generic, but dating.com argued that its mark was descriptive and the Trademark Office accepted that explanation, but art.com could not prove that dating.com had had achieved “acquired distinctiveness,” and so the Dating.com trademark (at present) is registered on the Supplemental Register, which is a legal admission that the mark is weak and subject to attack by third parties.
To get the strongest form of trademark protection on the Principal Register, there are several ways to prove that a trademark has “acquired distinctiveness”; i.e., the trademark is capable of distinguishing the applicant’s goods or services from those of others. One way of proving acquired distinctiveness is to state that the trademark — like art.com did — has been used continuously for more than five years and as a result of the mark’s long-standing and continuous use, consumers identify art.com as the source of its products and services.
Another way to prove that a trademark has acquired distinctiveness is by evidencing, for example, substantial sales/revenue, substantial expenses, unpaid major media coverage, and customer testimonials featuring the mark.
Yet another way to prove acquired distinctiveness is to retain an expensive survey expert to conduct a survey of customers to prove that they perceive a trademark as the source of the offering, which is precisely what Booking.com did. In so doing, the Supreme Court held that unlike the word “booking itself, which is generic, the combination of “Booking” and “.com” creates a descriptive mark based on the survey that booking.com presented through its survey expert that approximately 79% of the respondents identified booking.com as the source for travel services.
Q: Do you know of other examples where companies were not able to register their trademark based on their generic domain (the law.com, hotels.com weather.com…)?
Karen: Oh, there are many. Just off the top of my head, there’s Solar.com for online service for homeowners to receive quotes for solar panel installation and other home energy technologies; Crystals.com for online and retail sale of crystals; and Linentablecloth.com for table cloth of textile, table linen, and table napkins of textile.
Q: Are there any examples with other TLDs?
Karen: Yes, Ani.me for providing a website featuring entertainment information in the field of Japanese animation.
Q: The explanation of the Supreme Court is that if consumers perceive a descriptive term plus a .Com to be a brand name, then that name is entitled to trademark protection. Do you think that this decision will make generic domains now worth more? Or at least those who can prove that their consumers see them as a brand?
Karen: The decision certainly gives owners and buyers of generic domains a roadmap of what they would need to do to build up trademark rights to increase the value of their domains, but for undeveloped generic domains it doesn’t necessarily increase the value of top notch generic domains, which may be inherently valuable in their own right.