The internet’s domain names have become potentially trademarkable following a decision by the US Supreme Court today that Booking.com can in fact be registered with America’s Patent and Trademark Office (PTO) – against officials’ objections.
The near-unanimous decision [PDF] – Justice Stephen Breyer was the sole rebel – went against the PTO’s legal arguments that adding “.com” to a generic term was like adding “company” to a word and so “conveys no additional meaning that would distinguish [one provider’s] services from those of other providers.”
The Supreme Court disagreed; at some length. It agreed with both the district court and the appeals court that “consumers do not in fact perceive the term ‘Booking.com’ that way.” It cited as a key piece of evidence a survey that showed 75 per cent of respondents thought ‘Booking.com’ was a brand name, whereas just 24 per cent believed it was a generic name.
It didn’t help that the PTO hasn’t followed its own argument in the past, with the court noting trademark registration #3,601,346 for Art.com and #2,580,467 for Dating.com. If the decision went against Booking.com, the Supreme Court reasoned, then existing approved trademarks would “be at risk of cancellation.” But it was also scathing in its assessment that “we discern no support for the PTO’s current view in trademark law or policy.”
The same survey that showed 75 per cent of people felt Booking.com was a brand however also revealed that only 33 per cent felt “Washingmachine.com” was a brand whereas 61 per cent though it was generic. And that subjective measurement is likely to prove to be a major headache for the PTO in deciding on what presumably will now be a rush of .com trademark applications.
Robin Edgar
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