When is a domain name registerable as a trademark?
The Booking.com case
Dutch company Booking.com is at the centre of one of the world's most important domain name-related legal cases. The US Trademark and Patent Office (USPTO) has taken its long-running dispute with Booking.com to the US Supreme Court, claiming that the word 'booking' is too generic to be registered as a trademark. Addition of the '.com' suffix is not sufficient to make a generic term registerable, the USPTO argues.
It's a case with major implications for many internet-based operations, because consumers often firmly associate generic-term-plus-extension combinations with particular companies, as with bol.com, amazon.com and nu.nl.
Consumer perceptions
Booking.com initially challenged the USPTO's refusal to register the company's name back in 2016. And the lower courts found in the firm's favour. First a District Court and then a Court of Appeals sided with the reservation company. Both of the judges involved took the view that consumer perceptions were central to the case. They applied a principle that may well become highly influential jurisprudence: in order to be regarded as a registerable trademark, Booking.com would need to be primarily associated with the company and not with the corresponding generic term. The lower courts' ruling followed from Booking.com being able to demonstrate that 75 per cent of consumers thought of the company when they saw the name.
Legal entity's name is not a trademark
Nevertheless, the USPTO continues to argue that consumer perceptions are not decisive, pointing for example to the rules on the trademarking of legal entities' names. The addition of a legal form designation to a non-distinctive name is not considered to render the combination distinctive. So, if Amazon is not a trademark, Amazon Inc. cannot be one either. The same principle applies in Europe. If a legal form designation is considered non-distinctive, why should an internet address suffix be any different? Not unreasonably, the USPTO fears that if its argument is rejected, corporations may assert control over the online use of generic terms.
Implications for the market
What are the implications of the case? If the USPTO's appeal is rejected by the Supreme Court, Booking.com will be able to protect its brand more effectively. The company will be able to take action against anyone else that uses its name, on the grounds of trademark infringement, for example. And that could have repercussions for all the travel sites that use the word 'booking'.
Imitation of brand names might become easier
If, on the other hand, the Supreme Court rules in favour of the USPTO, it may become easier to imitate brand names such as Booking.com. People may use generic words like 'booking' in ways that cash in on the reputations of similarly named companies. Indeed, there is a risk that phishing and other scams that make use of lookalike names will become easier too.
Use of less common extensions could become more attractive
Finally, the outcome of the case could be important for the prospects of new generic top-level domains on the US market, the biggest domain name market in the world. The reason being that the ruling will have implications for the extent to which a domain-name-plus-extension combination is deemed distinctive. And that in turn could influence the appeal of using less common extensions such as .travel and .ninja when registering a domain name. Not surprisingly, experts in the domain name industry are following the Booking.com case very closely. A judgement is expected in February.
