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01 Jul 2020
A fundamental rule of trademarks is that they have to be distinctive, and that nobody can register a trademark on a generic term like "wine" or "plastic." In a case decided today by the U.S. Supreme Court, the court decided 8-1 that online travel agent Booking.com could register its domain name as a trademark. In this case, I think the majority got it wrong, and Justice Breyer's lone dissent is correct.
The U.S. Patent and Trademark Office (USPTO) had claimed that since "booking" is a generic term, if you add ".com" to it, it's still generic, just like adding "company" to a name. The case law on this issue seems to be pretty thin, since everyone cites the same two cases. The first is an 1888 case Goodyear's Rubber Manufacturing Co. et al. vs. Goodyear Rubber Co. The court held that since at the time Goodyear Rubber was a widely used term (rubber wasn't very useful until Charles Goodyear patented his vulcanization process), the name was generic and one Goodyear Rubber company couldn't keep the other from using a similar name. The other is a 1985 case Park N' Fly Inc. v. Dollar Park and Fly, Inc., where the court again found that "Park and Fly" describes what an airport parking company does, the name is generic, and the first company couldn't keep the other, which was in a city where the former didn't operate, from using a similar name.
In this case, the court decided that ".com" isn't the same as "company", and what matters is whether consumers identify the name with the company. The company submitted surveys saying that 75% of consumers surveyed thought Booking.com is a brand name, while only 35% thought washingmachine.com was a brand name, so it's a trademark. (It happens that washingmachine.com belongs to online appliance merchant Wayfair, but they don't promote it at all.)
Not so fast, replies Justice Breyer. For one thing, people have heard of Booking.com, so all the survey shows is whether the name is familiar, not whether it's non-generic. If someone did as much promotion for a laundry machine site washingmachine.com as Booking.com has done for its site, people would likely think it's a brand, too.
Furthermore, since everyone agrees that a domain name can only belong to one owner, whatever confusion a trademark is supposed to prevent can't happen, since nobody else can use Booking.com. (He observes there can be many Wine Companies, but only one wine.com.) What else would they do with a trademark registration? Booking.com says they have no plans to challenge other names like Bookings.com, eBooking.com, Booker.com, or Bookit.com, but he notes that this sets a precedent and other registrants are not likely all to be so restrained.
The main thing that Booking.com can do with their trademark is to use it in ICANN UDRP challenges, where in practice a party with a registered trademark always wins. But since Booking.com already owns similar names Booking.org, Booking.net, Booking.info, Booking.biz, Booking.us, Booking.travel, and Booking.cm, what problem would their trademark solve?
I agree with Breyer--generic domain names are generic names, and allowing trademark registration will offer no meaningful benefits to the registrant or the public, while allowing endless UDRP mischief.
Eric Goldman comes to similar conclusions.
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