{"id":6476,"date":"2019-11-12T12:56:42","date_gmt":"2019-11-12T16:56:42","guid":{"rendered":"http:\/\/ncjolt.org\/?p=6476"},"modified":"2020-06-04T20:52:23","modified_gmt":"2020-06-04T20:52:23","slug":"scotus-to-determine-if-com-allows-generic-terms-to-be-trademarked","status":"publish","type":"post","link":"https:\/\/journals.law.unc.edu\/ncjolt\/blogs\/scotus-to-determine-if-com-allows-generic-terms-to-be-trademarked\/","title":{"rendered":"SCOTUS to Determine if ".com" Allows Generic Terms to Be Trademarked"},"content":{"rendered":"\n

\u00a0\u00a0\u00a0\u00a0\u00a0 On Friday, November 8th, the Supreme Court of the United States granted certiorari<\/em> to hear a case arising out of the Fourth Circuit. The case involves the trademarking of the namesake of the popular travel website, Booking.com and is aptly named United States Patent and Trademark Office v. Booking.com B.V.<\/em><\/a>. The case is likely to be argued in the spring of 2020, and readers can expect a decision by late June.<\/a> <\/p>\n\n\n

\u00a0\u00a0\u00a0\u00a0 Booking.com applied for a trademark to cover the complete name of its website \u2013 Booking.com. The U.S. Patent and Trademark Office (\u2018USPTO\u2019) denied registration of the trademark under the authority of the Lanham Act<\/a>. The Lanham Act and previous case law prohibits the trademarking of generic terms<\/a> such as the terms \u201cbooking\u201d or \u201c.com\u201d would be on their own. It is under this rule that the USPTO believes Booking.com is not a protectable trademark.<\/p>\n\n\n

\u00a0\u00a0\u00a0\u00a0 Of course, Booking.com disagrees and believes that their website name is unique and furthers their distinctive brand such that their customers have come to identify with the name<\/a>. The travel site contends that the entire domain name \u2013 Booking.com \u2013 should be considered rather than each of the parts. They believe that when considering the entire domain name, the term is no longer generic<\/a>, and is a protectable trademark. Trademarking their name is obviously in Booking.com\u2019s interest and would offer some protection from competitors that might create domains piggybacking off of their brand.<\/p>\n\n\n

\u00a0\u00a0\u00a0\u00a0 Thus far, the courts have agreed with Booking.com. After exhausting internal appeals, the travel site appealed the USPTO\u2019s decision to the Eastern District of Virginia by filing a complaint. The district court granted partial summary judgment<\/a> in favor of Booking.com based on the USPTO\u2019s failure to satisfy its burden of proving that the public only recognized Booking.com as general online hotel reservations, rather than specifically relating the domain name with the company.\u00a0 Therefore, the district court found the domain name to be a descriptive \u2013 rather than generic \u2013 mark and was therefore protectable as a trademark<\/a>.<\/p>\n\n\n

\u00a0\u00a0\u00a0\u00a0 This holding was affirmed by the Fourth Circuit Court of Appeals<\/a>, which found no error in the district court\u2019s fact finding. The Circuit Court rejected both the idea that \u201c.com\u201d per se<\/em> makes a trademark descriptive and trademarkable and the contrary idea that the addition of \u201c.com\u201d cannot bring a term out of generic classification. Rather than making a per se<\/em> rule based on the inclusion of \u201c.com\u201d, the Circuit Court agreed with the district court and Booking.com<\/a> that the question turns on whether evidence indicates the term as a whole is descriptive and consequently a protectable trademark. <\/p>\n\n\n

\u00a0\u00a0\u00a0\u00a0 In its opinion<\/a>, the Fourth Circuit noted other cases that found simply adding \u201c.com\u201d to a term does not make the term non-generic. These cases included, among others, the likes of Advertising.com, Hotels.com, and Mattress.com. While the court noted these superficial holdings, it highlighted that these opinions left room for facially generic trademarks to be valid and protectable if supported by sufficient evidence<\/a> that the public relates the term to a specific company. The court utilized this wiggle room<\/a> in this rare occasion in which the USPTO put on no evidence to support the public having a generic view of the domain name. <\/p>\n\n\n

\u00a0\u00a0\u00a0\u00a0 The Supreme Court will have the final say<\/a> as to whether Booking.com is a protectable trademark this coming spring. Although the doctrine seems sound, this narrow issue is relatively untouched. A critical issue will be review of the Circuit Court\u2019s holding that the USPTO bears the burden of putting on evidence to support genericness, an issue that had not been addressed by the Fourth Circuit before this case. Readers should be on the lookout for the Supreme Court\u2019s opinion on this issue and the rest of the Booking.com case next June. The result of the case has the potential to substantially affect the landscape of trademarking for domain names. <\/p>\n\n\n

Anderson Tran <\/p>\n\n\n

November 12, 2019 <\/p>\n","protected":false},"excerpt":{"rendered":"

\u00a0\u00a0\u00a0\u00a0\u00a0 On Friday, November 8th, the Supreme Court of the United States granted certiorari to hear a case arising out of the Fourth Circuit. The case involves the trademarking of the namesake of the popular travel website, Booking.com and is aptly named United States Patent and Trademark Office v. Booking.com B.V.. The case is likely …<\/a><\/p>\n","protected":false},"author":1,"featured_media":6477,"comment_status":"closed","ping_status":"closed","sticky":false,"template":"","format":"standard","meta":[],"categories":[51],"tags":[],"_links":{"self":[{"href":"https:\/\/journals.law.unc.edu\/ncjolt\/wp-json\/wp\/v2\/posts\/6476"}],"collection":[{"href":"https:\/\/journals.law.unc.edu\/ncjolt\/wp-json\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/journals.law.unc.edu\/ncjolt\/wp-json\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/journals.law.unc.edu\/ncjolt\/wp-json\/wp\/v2\/users\/1"}],"replies":[{"embeddable":true,"href":"https:\/\/journals.law.unc.edu\/ncjolt\/wp-json\/wp\/v2\/comments?post=6476"}],"version-history":[{"count":1,"href":"https:\/\/journals.law.unc.edu\/ncjolt\/wp-json\/wp\/v2\/posts\/6476\/revisions"}],"predecessor-version":[{"id":6790,"href":"https:\/\/journals.law.unc.edu\/ncjolt\/wp-json\/wp\/v2\/posts\/6476\/revisions\/6790"}],"wp:featuredmedia":[{"embeddable":true,"href":"https:\/\/journals.law.unc.edu\/ncjolt\/wp-json\/wp\/v2\/media\/6477"}],"wp:attachment":[{"href":"https:\/\/journals.law.unc.edu\/ncjolt\/wp-json\/wp\/v2\/media?parent=6476"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/journals.law.unc.edu\/ncjolt\/wp-json\/wp\/v2\/categories?post=6476"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/journals.law.unc.edu\/ncjolt\/wp-json\/wp\/v2\/tags?post=6476"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}