New opportunities for owners of generic domain names

Screen Shot excerpt from booking.com homepage

Much to the chagrin of companies which have built a brand based on a name plus the top level domain .com, like booking.com or cars.com, the US Patent and Trademark Office has long denied applications for trademark based on those domain names. The Supreme Court changed that last week with a ruling which states that the term Booking.com is eligible for trademark protection even though the term “booking” on its own is clearly generic.

What this means is that a host of other “generic.com” domains (like cars.com or wine.com) will become eligible for trademark protection as well. Unfortunately, what it also means is that those generic words will become more difficult to use in everyone else’s domain names, since trademark holders will try to prevent any similar use of those words (like cars or wine) in a domain name at all. The majority seems pretty unimpressed by that concern, but given that the mere threat of a trademark infringement case can be very risky for a small business it’s definitely a practical concern for them.

It remains to be seen exactly what circumstances will be seen to render a generic domain name protectable, since the Supreme Court didn’t articulate a hard-line rule. If we look at the booking.com domain name, however, the following factors certainly weighed in the company’s favor:

  • The company has consistently referred to itself as booking.com, including the domain extension, rather than booking or any other name.
  • The company’s logo also includes the .com, seemingly without exception.
  • Consumers also clearly know the company as booking.com, and do not think of that as merely a domain name to get to the company’s site.

It’s important to note that this decision doesn’t change the fact that a domain name itself is not considered “use” under trademark law, so companies who hope to trademark their .com domain name will want to make sure that use can be demonstrated separate from the purely functional use of accessing the website using a browser.

If you’re the proud owner of a generic domain, it’s time to make sure your branding reflects the entire domain name, since that could be the difference between a registrable trademark or just a domain name.

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