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Court rules generic dictionary domains CAN be trademarked

Kevin Murphy, February 11, 2019, 14:37:28 (UTC), Domain Policy

A US appeals court has ruled that generic, dictionary domain names can be trademarked.

The hotel-booking web site Booking.com was told last week that it is in fact eligible to have “Booking.com” registered as a trademark, over the objections of the US Patent and Trademark Office.

The ruling could have a chilling effect on domain name choices in the hotel-booking market.

USPTO had denied the company’s trademark application in 2012 because “Booking.com” was considered too generic.

Under US trademark law, you can’t register a trademark if it merely generically describes the product or service you offer rather than its source.

You couldn’t register “Beer” as a brand of beer, for example, though you might be able to register “Beer” as a brand of shoes.

Booking.com sued to have the USPTO ruling overturned in 2016, and in 2017 a district court judge ruled that “although ‘booking’ was a generic term for the services identified, BOOKING.COM as a whole was nevertheless a descriptive mark”.

USPTO appealed, saying that “Booking.com” is too generic to be trademarked, but last week it lost.

In a 2-1 majority decision, the appeals court ruled:

We hold that the district court, in weighing the evidence before it, did not err in finding that the USPTO failed to satisfy its burden of proving that the relevant public understood BOOKING.COM, taken as a whole, to refer to general online hotel reservation services rather than Booking.com the company… we reject the USPTO’s contention that adding the
top-level domain (a “TLD”) .com to a generic second-level domain (an “SLD”) like booking can never yield a non-generic mark.

Key evidence was a survey Booking.com had submitted that indicated that almost three quarters of consumers understood “Booking.com” to be a brand name, rather than a generic term to describe hotel-booking web sites.

Here are some other extracts of the appeals court majority’s thinking, as they relate to domain names:

Merely appending .com to an SLD does not render the resulting domain name non-generic because the inquiry is whether the public primarily understands the term as a whole to refer to the source or the proffered service.

We… conclude that when “.com” is combined with an SLD, even a generic SLD, the resulting composite may be non-generic where evidence demonstrates that the mark’s primary significance to the public as a whole is the source, not the product

because trademarks only protect the relevant service — here, the district court granted protection as to hotel reservation services but not travel agency services — protection over BOOKING.COM would not necessarily preclude another company from using, for example, carbooking.com or flightbooking.com

In sum, adding “.com” to an SLD can result in a non-generic, descriptive mark upon a showing of primary significance to the relevant public. This is one such case.

The ruling does not appear to protect all uses of a generic dictionary word combined with a TLD, but rather only “rare circumstances” where there’s evidence of a secondary, non-generic meaning.

One judge on the case, James Wynn, was not convinced by the majority’s thinking. He warned that the ruling goes against years of legal precedent and could enable Booking.com to subject competitors to expensive litigation.

In his dissenting opinion, he wrote:

BOOKING.COM is a run-of-the-mill combination of a generic term with a Top Level Domain that creates a composite mark concerning the subject or business encompassed by the generic term—precisely the type of mark that the courts in Hotels.com, Reed Elsevier Properties, 1800Mattress.com, and Advertise.com found did not amount to the “rare circumstance” that warranted affording the domain name trademark protection.

Presumptively allowing protection of domain names composed of a generic Secondary Level Domain and Top Level Domain conflicts with the law’s longstanding refusal to permit registration of generic terms as trademark

Wynn added that he was “not convinced” that Booking.com’s competitors that use the word “booking” in their domains will be protected by the “fair use” defense, and that the existence of such a defense will not prevent Booking.com from suing them out of business regardless.

Put simply, putative competitors may — and likely will — choose not to operate under domain names that include the word “booking” — even if that term best describes the service they offer — because they do not want to incur the expense and risk of defending an infringement action.

The full ruling can be read here (pdf).

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Comments (13)

  1. Tommy gio says:

    Interesting.

    Regardless would not every domain be protected if they started it before they where granted this temp trademark.

    Say for example ebooking, ibooking, hotelbooking etc. How would all the prior sites be affected? Also what area is the trademark in, US only.. Great article and find.

  2. Mike says:

    Where does that leave owners of booking.com typos, a generic word, that are sending traffic to hotel sites?

    • Kevin Murphy says:

      If you’re typosquatting a trademark, you’re at risk of UDRP at the very least, I’d say.

    • tommy gio says:

      Mike,

      Is this Mike K,

      Great question. It’s really tough because if you registered a domain typo like insurancee or morgage or booooking years ago how can a udrp stand up if when you registered it if was not a trademark at that particular time. I mean you could send that traffic to trivago. Let’s say you have ibooking or ebooking and you send traffic to booking.com as well as hotels.com and trivago are you guility or safe I have no idea and how does it work with established review sites that have been around 10 years.

  3. page howe says:

    so if i follow this correctly, the public understand Booking.com to be this company, and you cant trademark the generic work, only the appendage Booking.com..

    so its seem to follow they havent been given approval to trademark Booking and Booking.travel would not be under this ruling.. because the public only identifies “Booking.com” to be this company and none other.

    and Booking.Travel would be distinctively different

    page

  4. I tried to trademark all my genetics in 1998 and was turned down by the uspto. This makes for a lot of interesting legal scenarios.

    What if someone types in Nashville.com into google and it delivers paid advertisers? Isn’t google making money off of “generic brands”? If so, that would be a boon for gTLDs.

    I would love for a lawyer like John or Phil to chime in.

  5. I tried to trademark all my genetics in 1998 and was turned down by the uspto. This makes for a lot of interesting legal scenarios.

    What if someone types in Nashville.com into google and it delivers paid advertisers? Isn’t google making money off of “generic brands”? If so, that would be a boon for gTLDs.

    I would love for a lawyer like John Berryhill or Phil Corwin to chime in.

  6. Proof of secondary meaning is the key here. The mark owner would have to prove things like substantial sales and expenses, unsolicited media attention, etc. I didn’t read the opinion as of yet but it wouldn’t surprise me if Booking.com used an expert and none of these proofs come cheap. It’s quite a high bar to prove.

    • Philip Corwin says:

      The key factor in the decision was a “Teflon survey” demonstrating that 75% of consumers associated booking.com with a particular source of hotel booking services. Having read the majority opinion and dissent, both well reasoned, I wouldn’t be surprised to see the decision appealed to and possibly accepted by the Supreme Court, as its implications for trademark and domain law are multiple and significant.

      This comment represents solely my personal view.

  7. Luke 8:17 says:

    The “answer” if you want to use a domain that contains “booking.com” for the same service offering is to leave the “.com” out of the branding, like so:

    Your domain is hotelbooking.com, but your are doing business under the brand “Hotel Booking” (or “HotelBooking”). If you try to brand as “HotelBooking.com,” you may run into trouble. But Booking.com has no right to the word “booking” itself for its trademarked services.

    AND HERE IS AN EXAMPLE WHERE SUCH A DOMAIN WAS ALREADY TRADEMARKED OVER 10 YEARS AGO:

    Look up the USPTO tradmark for SinglesEvents.com. If that is not an invalid trademark which totally contradicts everything the USPTO has stated and just litigated, I don’t now what is.

    Personally, I’m also inclined to think the two trademarks for Sex.com are the same.

  8. Luke 8:17 says:

    The “answer” if you want to use a domain that contains “booking.com” for the same service offering is to leave the “.com” out of the branding, like so:

    Your domain is hotelbooking.com, but your are doing business under the brand “Hotel Booking” (or “HotelBooking”). If you try to brand as “HotelBooking.com,” you may run into trouble. But Booking.com has no right to the word “booking” itself for its trademarked services.

    AND HERE IS AN EXAMPLE WHERE SUCH A DOMAIN WAS ALREADY TRADEMARKED OVER 10 YEARS AGO:

    Look up the USPTO tradmark for SinglesEvents.com. If that is not an invalid trademark which totally contradicts everything the USPTO has stated and just litigated, I don’t now what is.

    Personally, I’m also inclined to think the two trademarks for Sex.com are the same.

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