On Trademarks

by Joe Mauch

Joe Mauch – Shartsis Friese

It is not every day that the Supreme Court of the United States issues a decision affecting trademark law. It is no surprise then that the recent decision in United States Patent and Trademark Office v. Booking.com B.V., 140 S. Ct. 2298 (2020), received significant coverage in the legal and mainstream media. As reported in those various articles, blogs, and client alerts, the upshot of the decision was that the Supreme Court allowed Booking.com to proceed with its trademark application for BOOKING.COM. I had more than one client reach out to me in the days after the decision to inquire whether they could now file an application for their own trademark plus “.com.”  The answer every time was “no.” To understand why requires an explanation of the issue that the Booking.com decision was and was not addressing.

The Trademark Office previously took the position that a trademark application for a generic term plus “.com” was per se generic and had to be rejected. On this ground, it had rejected Booking.com’s application for BOOKING.COM in connection with the company’s online hotel-reservation services. The Supreme Court’s holding was that use of [GENERIC].COM as a brand is a generic name for a class of goods or services—and thus not a trademark—only if the term has that generic meaning to consumers. If consumers understand the [GENERIC].COM brand to be associated only with the brand owner, then the [GENERIC].COM brand could be a trademark (and thus registered by the Trademark Office and enforced by the owner). Since Booking.com had submitted substantial evidence of its use of BOOKING.COM as a trademark and the fact that consumers associate BOOKING.COM with its site, not with travel booking sites generally, the Supreme Court thus determined it should be allowed to register its trademark.

This is an important decision, but it is a narrow one that pertains to a limited number of trademark owners or prospective owners. And not to my clients. Why? Because the decision does not change the law that a party cannot register [TRADEMARK].COM as a trademark, unless it actually markets itself as [TRADEMARK].COM.  As the Trademark Office states in its Trademark Manual of Examining Procedure,

A mark composed of a domain name is registrable as a trademark or service mark only if it functions as a source identifier. The mark, as depicted on the specimen, must be presented in a manner that will be perceived by potential purchasers to indicate source and not as merely an informational indication of the domain name address used to access a website.

In other words, a prospective trademark owner has to actually refer to its goods or services with the “.com” as part of the trademark. This is not something that most companies do. Nike markets itself as NIKE, not NIKE.COM. Booking.com—which markets itself as BOOKING.COM, not BOOKING —is an exception. I could not think of many companies that use “.com” or any other top level domain as part of their trademark (1-800-Flowers.com, the infamous Pets.com of the first Dot Com Bubble), but perhaps you can.

So what can a company that does not use “.com” do to protect its trademarks and its domain names? As is always the case, it can and should register its trademarks and monitor the commercial landscape for infringers. Those trademark rights, particularly if the trademark is registered, will go a long way to protecting the trademark owner from third parties that try to use the trademark or a confusingly similar one in a domain name. Nike may not have trademark rights in NIKE.COM, but its trademark rights in NIKE allow it to stop (in most instances) others from using that trademark in an improper way in a domain name, such as Nikeshoes.com or Nike.net. Stopping the use of infringing trademarks in domain names can be done in a court action, but the most common forum for asserting such rights is an administrative proceeding pursuant to the Uniform Domain Name Dispute Resolution Policy (UDRP). UDRP proceedings —which require, among other things, a showing that the domain name owner does not have any legitimate interest in the trademark and is using the trademark in the domain name in bad faith—are a fast and effective mechanism to protect trademarks and domain names that your client should know about, especially if they are in the retail goods space.

So the Booking.com decision will in all likelihood not allow your clients to register their [TRADEMARK].COM trademarks, but it does present an important opportunity for you to talk to your clients about their trademarks and the way they are using their trademarks in domain names.

Joe Mauch is a Partner at Shartsis Friese LLP, and has extensive experience in a number of areas of business litigation, with a particular focus on intellectual property.