Supreme Court Says Generic Domains Like Booking.com Can Be Trademarked (arstechnica.com) 83
An anonymous reader quotes a report from Ars Technica: The U.S. Patent and Trademark Office erred by finding the term booking.com was too generic for trademark protection, the Supreme Court ruled on Tuesday. Trademark law prohibits anyone from registering generic terms that describe a class of products or services. Anyone can start a store company called "The Wine Company," but they can't use trademark law to stop others from using the same name. When the online travel giant Bookings Holdings sought to trademark its booking.com domain name almost a decade ago, the U.S. Patent and Trademark Office concluded that the same rule applied.
Booking Holdings challenged this decision in court. The company pointed to survey data showing that consumers associated the phrase "booking.com" with a specific website as opposed to a generic term for travel websites. Both the trial and appeals courts sided with booking.com, finding that booking.com was sufficiently distinctive to merit its own trademark -- even if the generic word "booking" couldn't be trademarked on its own. Trademark law declines to protect generic terms in an effort to promote competition. If a company could trademark a word like "booking" or "wine," it could interfere with competitors who want to accurately describe their products in the marketplace. That would give companies that trademark generic terms an unfair advantage.
But an opinion by Justice Ruth Bader Ginsburg (and joined by seven other justices) found that this wasn't a serious concern for dot-com trademarks. A company like Travelocity or Expedia might describe itself as "a booking website," but it would never describe itself as "a booking.com." Ginsburg notes that the rules of the domain-name system ensure that only one company can use a name like booking.com, so consumers are likely to understand that "booking.com" refers to a particular website -- it's not a generic term for booking websites in general.
Booking Holdings challenged this decision in court. The company pointed to survey data showing that consumers associated the phrase "booking.com" with a specific website as opposed to a generic term for travel websites. Both the trial and appeals courts sided with booking.com, finding that booking.com was sufficiently distinctive to merit its own trademark -- even if the generic word "booking" couldn't be trademarked on its own. Trademark law declines to protect generic terms in an effort to promote competition. If a company could trademark a word like "booking" or "wine," it could interfere with competitors who want to accurately describe their products in the marketplace. That would give companies that trademark generic terms an unfair advantage.
But an opinion by Justice Ruth Bader Ginsburg (and joined by seven other justices) found that this wasn't a serious concern for dot-com trademarks. A company like Travelocity or Expedia might describe itself as "a booking website," but it would never describe itself as "a booking.com." Ginsburg notes that the rules of the domain-name system ensure that only one company can use a name like booking.com, so consumers are likely to understand that "booking.com" refers to a particular website -- it's not a generic term for booking websites in general.
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Caveat (Score:4, Insightful)
I could see an argument that .COM is also a generic term, and simply combining two generic terms together does not necessarily make it non-generic. As someone else pointed out, it would be like ruling that "Construction" is a generic term and cannot be trademarked, but "Construction, Inc." can be trademarked. I don't think it's a huge deal, unless the ruling infers that Booking.com can then sue anyone who has a similar domain name, such as Booking.co.uk or Booking.tv. If it's based on a generic term to begin with, the scope of the trademark should be incredibly limited.
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An even bigger problem would be if they went after similar domain names that weren't even competitors in the same industry, like Book-King.com.
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except that domains are enforced unique, thus perfect matching for trademarks.
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I think the worry is that they'll turn around and use their trademark on booking.com to go after companies using the term "booking". The supreme court ruling clearly doesn't support that, but that doesn't matter since, in the real world, they now have a de facto trademark on the word "booking". Anyone wanting to fight back about it will have to fight all the way back to the supreme court to defend themselves. Also what the USPTO may draw from this is that it's now fine to issue trademarks on generic terms l
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Do you need to hire an attorney to verify no existing trademarks applied against it?
You don't need an attorney to do that. Just go to uspto.gov and do a search.
My spouse and I have had our own business for 18 years. During that time, this is how much we have spent on lawyers: $0.
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Yeah , IP law generally shits me (Software patents are a menace) , but I'm ok with strong trademarks, because ultimately they are about protecting against fraud, not locking the market off from startups.
What I'd *like* to see is better ability to claim back squatted domains from bad actors. If i have a trademark for my company and get absent minded one year and forget to rereg, and like 5 minutes later some shithead squats it and wont give it back unless I pay $50K , that ought be reason to call the cops, n
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I have to disagree.
Now, there is a trademark, "booking.com" that is separate from the web site "booking.com".
If Booking Holdings ever allows the booking.com domain to lapse, the person who picks it up can now not use the domain name in, e.g., advertising because the domain name is now trademarked.
Maybe Booking Holdings will never allow the domain to lapse. Maybe they will sell the trademark with the domain name. But they are not now (if they ever were) synonymous. And there are a gobsmacking lot of domai
Soon to be followed with a (Score:3)
what about bookingcom.com? (Score:4, Interesting)
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I disagree about real-world names. Here's a few: Adobe, Morgan Stanley, Advanced Micro Devices, Norfolk Southern, Tyson Foods, General Electric, ServiceNow, Apple, Capitol One, Texas Instruments, Whirlpool, International Paper, Union Pacific, Target, Total Wine, Progressive, Pizza Hut, Domino's.
None of those use words or proper names which were dreamed up for the purpose of naming a company, but they're all recognizable. If someone says "I hate Adobe," nobody thinks they're talking about clay. If someone
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You might consider them all recognisable, but there are a few in that list which I haven't heard of, and others for which I have multiple companies as referent. That might be a case of being in different markets, which is why trademarks are generally specific to a single market. Then there are those which kind of fall between your position and GPP's position. E.g. Apple used to be Apple Computers. Back in the late 90s, a search for "apple" on Yahoo! or Ask Jeeves would probably have returned a lot of pages
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If someone says "I hate Adobe," nobody thinks they're talking about clay.
I think that is contextual. In an office building sitting around a bunch of computers, yes we all know its the software company.
If we were having a conversation outside a pottery kiln, I probably would think you were talking about clay.
Ironically for a company that produces print layout software, if were sitting across the desk from an Architect discussing plans for an elevation, I might be really unsure to which thing he was referring.
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Real-word names are good choices for branding, if the word otherwise has nothing to do with the product. And they are much easier to defend as a trademark. Say for example that I wanted to set up a website to sell phone chargers, under a generic name like chargers.com. Someone could easily set up a site like chargers-sales.com and I'd not have muc
I read it the exact opposite (Score:2)
> The way I read this is that if someone made a company named "bookinghotels.com" that would be fair game, even if the intent was specifically to steal customers from booking.com and hotels.com via confusion
I'm curious how you get there, because to me it's the exact opposite. If I put up a burger restaurant with a yellow and red color scheme and call it McDonaldland with "the intent was specifically to steal customers from McDonald's via confusion" I'm going have a lawsuit BECAUSE of McDonald's trademark
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Expired names (Score:2)
Makes lots of sense, but what does this mean if booking.com forgets to renew their domain name ?
Can the new purchaser then use it ? Or is his only option really to sell back this virtual good with the booking.com trademarked stamped all over it ?
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If someone else tried to register booking.com they would be violating booking.com's trademark. They wouldn't 'sell' it back, they would be ordered to give it up.
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Trademarks are only valid if the mark is in commercial use. If they get out of the business the mark is no longer in commercial use and would no longer be valid.
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Maybe, maybe not. Depends if the new holder tried to market themselves as "booking.com". If they didn't, they wouldn't really be violating trademark. They probably also wouldn't violate trademark even if they did market themselves that way, as long as they sold books (for e.g.), and not... whatever Booking Holdings sells (travel booking, I'd assume). Also, failure to hold on to the domain would probably be considered giving up the trademark, so it wouldn't even exist anymore (trademarks have to be actively
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If the name expires, and you buy it, and booking.com chooses to sue you, they just might win. That's one reason why the trademark is important to them, even though they already have the domain name registered.
Could probably use it to sell books (Score:2)
Froma legal point of view:
As long as booking.com maintains their trademark (actually a service mark) others cannot immediately use the term "booking.com" to sell hotel reservations. They probably COULD use the site to sell books, since trademarks and service marks apply to a particular class of goods and services.
If the registration expired because booking.com went out business, if they stop using the mark and stop filing the paperwork with PTO, then someone else can start using it.
Adding real world practic
Facebook trademarked "Like" (Score:1)
Facebook trademarked "Like". How's that not generic as hell?
Re:Facebook trademarked "Like" (Score:5, Informative)
Re: Facebook trademarked "Like" (Score:2)
There is nothing "specific" about it.
That's the point.
It's way beyone any treshold of originality or indiviual recognizability.
Try to descibe the Facebook "Like" thumb/button to me in a way that it can only be the facebook one.
"White shittily drawn hand with thumb sticking up, thin black outline, on a blue background." is all I got.
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It's a logo. There is no need to 'describe' it, the artwork itself is the description. It's not original? Where did that requirement come from? There is no such requirement. It's not recognizable? Bullshit. Where else have you seen that logo that is not associated with Facebook?
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Most measures I've seen suggest that the Apple logo is among the top 3 most recognizable in the world, and it most certainly is trademarked, but it wouldn't pass the fictional standards that you just made up. How less original can you get than an apple? And I've seen plenty of other logos that use apples, including at least one or two with bites taken out of them, so it's hardly recognizable, right? And unless you're "describing" it by defining bezier curves, I don't see how you could describe it in a way t
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They did not trademark the word "like." They trademarked two logos: 1) a specific rendering of a thumbs-up, and 2) that same rendering adjacent to a rendering of the word "like" contained within a box. The word "like" itself is not a registered trademark, and logo trademarks are very limited in scope -- basically anyone can use them as long as they're not impersonating Facebook or trying to create market confusion.
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Goddamnit can't y'all read [multichannel.com]?
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Plenty of other sites use a "like" icon of their own. But this is not the same. Booking.com did not trademark "booking," but "booking.com."
A better analogy would be trademarking like.com. That would be entirely legitimate, in my view.
So adding .COM makes it okay? (Score:2)
Maybe I misunderstand, but are they saying Pets is generic but pets.Com can be protected?
That kind of seems sensible, so long as the Pets.Com mark cannot then be used to stop someone owning Pets.Net or Pets.Co from using the generic word for the name of their stores
(None of those would be the exact same domain name as Pets.com).
Re:So adding .COM makes it okay? (Score:4, Insightful)
Maybe I misunderstand, but are they saying Pets is generic but pets.Com can be protected?
yes, that is what is protected.
so long as the Pets.Com mark cannot then be used to stop someone owning Pets.Net or Pets.Co
That is a different case based on different arguments.
Re: So adding .COM makes it okay? (Score:2)
You don't understand. It's short for "... on a computer"! :D
Not unaminous (Score:5, Insightful)
Although I agree with the decision, I think Breyer's dissent makes a good point.
We have problems with submarine patents now - what's to stop a company or even domain registrars from making submarine domain names and then trademarking the entire concept:
But in his lone dissent, Justice Stephen Breyer argued for turning this logic around: the domain-name system already guarantees exclusivity for the holder of a domain like booking.com. So why does a domain name need to be trademarked in the first place? After all, a company that doesn't own the booking.com domain is unlikely to want to adopt that trademark, since it would just be funneling business to the domain owner.
And while it's true that Travelocity wouldn't describe itself as "a booking.com," Breyer notes, it also wouldn't describe itself as "a Booking Inc." Yet trademark law prohibits anyone from trademarking such a generic company name.
Breyer argued that what's really at stake in this case is the ability to register domains that are similar but not identical to booking.com. Thanks to today's ruling, booking.com could "threaten trademark lawsuits against competitors using domains such as bookings.com, eBooking.com, booker.com, or bookit.com," Breyer wrote. While Booking.com insisted that it wouldn't do that, Breyer noted, other companies might not be so restrained.
Hence, Breyer warned, allowing the registration of generic domains like booking.com could enable companies to effectively monopolize the use of the generic term in conjunction with a dot-com domain name. In this sense, it raises the same issues as allowing trademarks for company names like "The Booking Company" or "Bookings Inc." That is, it could allow one company to monopolize a term that describes an entire industry, not just one company.
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what's to stop a company or even domain registrars from making submarine domain names and then trademarking the entire concept:
You can't secretly register a domain, that's what.
in his lone dissent, Justice Stephen Breyer argued for turning this logic around: the domain-name system already guarantees exclusivity for the holder of a domain like booking.com. So why does a domain name need to be trademarked in the first place?
It's to provide an effective defense against others misusing your name.
There is no such thing as a "generic" domain name, period. There are only proper domain names. There's no confusion about who owns a domain because domains are registered.
If anything, domains should have automatic trademark protection for as long as the domain is held, which expires when registration is not renewed.
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You can't secretly register a domain, that's what.
You can't "secretly" register one but you can pre-emptively register one as domain registrars have done all the time to charge more for the domain name - now you can potentially expand that to a trademark registration and up the value of your virtual property.
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You can't randomly trademark things. The mark must be in 'commercial use' in a particular field.
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True - you'd have to put up a front business along with that by setting up a webpage and doing some business with it. The question is "how much" business and "how successful" does a company have to be to buy a trademark from the government and then use that as leverage against other businesses in the same domain?
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you can register a trademark "intent to use" [uspto.gov]
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Sure, you can do that. But if you sue someone for using your 'trademark', you better be prepared to show the court exactly what your 'intent' is, and when that 'intent' will be put into use. Likewise if someone challenges the validity of the trademark. "I'm going to use it as soon as someone else wants to use the mark" isn't going to fly.
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You are correct regarding legal rights. This might come into play if someone tried to register something like boooking.com, or bookin.com, or some other name that might be confusingly similar to booking.com, or typo-squatting the domain name. The trademark gives them the right to sue, while just owning the domain name does not.
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Where this comes into play is when I trademark amazin.com as an online sales platform and then go to ICANN pointing out that amazon.com is benefitting from consumer confusion due to the similarity of our names, so they must hand that domain over to me.
Re:Not unaminous (Score:4, Interesting)
Because there are slimeball companies out there who try to generate bad publicity in someone else's name. If booking.com doesn't have exclusive trademark control over "booking.com", then these slimeballs can e.g. pay spammers to send spam emails in the name of booking.com, making people think that booking.com uses spam (when they don't). And thus make them less likely to use booking.com.
I'd argue that "Ginsburg notes that the rules of the domain-name system ensure that only one company can use a name like booking.com, so consumers are likely to understand that "booking.com" refers to a particular website -- it's not a generic term for booking websites in general." is enough to signal to lower courts that the trademark applies to booking.com and only booking.com, not to other similar domains like ebooking.com or bookings.com, etc..
The only concern I see here is what happens to criticism domains, like fu-booking.com or i-was-ripped-off-by-booking.com. Where the "booking.com" at the end clearly does refer to booking.com.
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I disagree with the ruling, it's not hard to imagine the trademark and domain falling under control of different entities. What then?
I'd be find with someone having a trademark on a particular stylization (font, color) of the domain, but not a blanket trademark of the domain.
Company made a mistake (Score:2)
Stupid Decision (Score:2)
This decision is so moronic, it hurts. So we have eight Supreme Court Justices who have no idea how trademarks work in the Real World, and one who almost hits the mark.
Despite the theoretical usage outlined by Ginsberg, this opens the door for LOTS of legal abuse. Now anyone who has the word "booking" in their domain name is open to being sued by booking.com for trademark infringement. Sure, the Supreme Court just said that such cases aren't winnable, but they're overlooking the Real World. Owners of such d
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I don't think so. They didn't trademark "booking," they trademarked "booking.com." So if someone else tries to trademark booking.com.com, or booking.com.org, or some variation like that, booking.com would have the right to sue. But if somebody called themselves booking.org, that's not covered by the trademark, as long as it's not confusing to people.
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Now anyone who has the word "booking" in their domain name is open to being sued by booking.com for trademark infringement.
In the U.S., anyone is open to being sued by anyone else all the time. The thing is it would be a frivolous lawsuit because the SCOTUS has said in this ruling that simply having booking in the name would not infringe. It would require "booking.com" and "MyBooking.com" wouldn't necessarily infringe because it is not likely to be confused with "booking.com". "Booking.net" wouldn't infringe on their trademark. As someone else pointed out, "booking.com.net" or "booking.com.com" would infringe but would require
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SCOTUS = America (Score:1)
I don't know where to buy books now (Score:2)
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Terrible news (Score:2)
Now how will I order my pizza from pizza.net?
Yeah, they also think 1+1=2 is patentable. (Score:2)
"on a Computer".
So the idiots running the nuthouse is the only reason anyone listens to them.
scotus.com? any? (Score:1)
Kind of have a feeling it would be quite a different outcome.
USPTO is insufficiently managed. (Score:2)
The web site needs major improvements. I got a message that the USPTO didn't like the address I gave for myself for my trademark, "Futurepower".
When I apply for a copyright, I get a poorly written reply months later.
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PTO doesn't deal with copyrights.
oracle.com (Score:3)
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Tangent issues (Score:2)
Shouldn't domain names automatically qualify for automatic trademark status of a sort?
I assume they make sure someone owns a domain before giving the domain trademark status.
What if they lose the domain? Could they prevent anyone else from using it? I think the trademark needs to be dependent on a person owning the domain.
Two registeries for the same thing?
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Expedia is a booking .COM (Score:1)
but it would never describe itself as "a booking.com." -- Ginsburg
not only is Expedia a booking .COM, Travelocity is another booking dotcom.
So, if I acquire Kleenix.com, I can trademark it? (Score:2)
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Seeing as how Kimberly-Clark already owns the Kleenex trademark AND kleenex.com, no, you could not.
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However, kleenix is now considered a genericized trademark. [wikipedia.org]
This entire issue of genericized trademarks is going to conflict with the issue above.
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From your own link, Kleenex is not a genericized trademark. It is a term that people USE as a generic, but it is still a legally protected trademark. People may call any facial tissue 'Kleenex', but nobody other than Kimberly-Clark can call their product Kleenex. That is as opposed to actual genericized trademarks, like 'aspirin'. Anybody can call their product aspirin, not just Bayer.
I don't know what 'conflict' you see. Actual trademarks (like Kleenex) are of course protected. I suppose somebody cou
booking.com (Score:2)
So now where do they expect me to post mug shots of suspects?
Great Job, Geniuses (Score:2)
Duration (Score:2)
Also, the trademark can only apply to the TLD. Subdomains may not be trademarked.
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Trademarks are only valid as long as they are in active commercial use. No special rules are required for domain names.
mybooking.com (Score:2)
So mybooking.com is ok then, right?
No company lasts forever (Score:2)