Following last week’s Supreme Court decision allowing booking.com to trademark its website name for travel-related services, Dickinson Wright PLLC attorney, Michael N. Spink says the ruling will open up possibilities for new trademark protection to website owners whose domain name is a generic term followed by dotcom.
“The decision is counter to prior precedent that has long-forbidden the trademark registration of generic words such as booking, including when combined with other generic terms such as company or .com,” Spink said. “Yet, the Court is acknowledging in this decision that consumers understand booking.com is an indicator of the source of travel services provided by a single entity. With companies like Salesforce.com, Wine.com and Cars.com filing amicus briefs in support of booking.com, there is likely to be a flurry of activity for long established internet-based companies who fit this profile to also register their website domain names.”
Spink says the Supreme Court ruling reflects the strength of the Internet in modern commerce and the broad understanding of Internet companies’ role in various business sectors.
“The business world has changed dramatically since the generic word restrictions on trademarks were put into place,” Spink said. “Consumers have come to recognize these internet-based company names, and the Court is reconsidering traditional trademark rules for our e-commerce era.”
Still, there is no need for most businesses to trademark their website domain, as it may already be protected. That’s because while most company names are also included in their website, the names are often used to brand their products and/or services in commerce - which gives them some level of protection that likely extends to the name in their website address.
Spink adds that it will continue to be difficult to secure and register other generic word plus dot com domain names. Based on the Court’s ruling, significant evidence will likely be required to show consumer recognition of the domain name, and likewise generic names will continue to be impeded by prior registrations.
“The trademarked name has to be used in commerce through marketing, advertising and other actions that show consumers recognize it as referring to a particular real entity as the source of the services or goods,” Spink said. “Further, it can be expensive to overcome the presumption of a generic term as a business term, with trademark surveys costing five to six figures.”
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