PALM BEACH, FL – On Friday, the U.S. Supreme Court agreed to consider whether the addition of “.com” to a generic word or phrase can be trademarked when it reviews “United States Patent and Trademark Office v. Booking.com B.V.” on Docket No. 19-46 with the United States Court of Appeals for the Fourth Circuit.
The issue has reached the highest court in the country after lower courts reversed the decisions of the U.S. Patent and Trademark Office (“USPTO”) and Trademark Trial and Appeal Board to refuse Booking.com’s applications to register its trademarks.
At issue specifically is:
Whether, when the Lanham Act states generic terms may not be registered as trademarks, the addition by an online business of a generic top-level domain (“.com”) to an otherwise generic term can create a protectable trademark.
The issue will have long reaching effect as if the high Court rules that Booking.com were allowed to register for trademark protection, it would open up the possibility for the company to target similar domains such as fastbooking.com or hotelbooking.com as infringing against its trademark.
Previous companies looking to secure trademark protection for their URLs such as hotels.com, mattress.com and lawyers.com have all been denied those rights. Appealing to the Court, the USPTO said that simply adding “.com” to the end of a generic word does not render it distinctive, however – it seems to make it incredibly distinctive, from any other domain, especially when there is now a whole slew of new domain ending opportunities.
Usually when a company is wanting to get a trademark for their generic domain they are left to do it as a “design mark” or an image/drawing, which is eligible to claim distinctiveness, but historically, it has been rare to impossible to get a “standard character claim”, which means the words / letters / characters themselves. The coming decision could change all of that.
About The Author: John Colascione is Chief Executive Officer of Internet Marketing Services Inc. He specializes in Website Monetization, is a Google AdWords Certified Professional, authored a ‘how to’ book called ”Mastering Your Website‘, and is a key player in several Internet related businesses through his search engine strategy brand Searchen Networks®