SUPREME COURT ENHANCES THE VALUE OF DESCRIPTIVE DOMAIN NAMES
The United States Patent and Trademark Office has long since refused to provide trademark protections to merely descriptive names. For example, a wine seller could not trademark the name “Wine Store” and prevent any other business from using that name. It is simply descriptive of what that business does. This only makes good sense since we want consumers to be able to understand what products and services a merchant offers.
However, the United States Supreme Court on June 30, 2020, issued their opinion related to a trademark application of booking.com. In that case, the United States Patent and Trademark Office refused registration of the “booking.com” trademark stating that the term “booking” for online hotel reservation services was simply a generic. Booking.com however introduced evidence to say that, in consumers’ minds, the website www.booking.com and the name booking.com were associated specifically with its company. Based at least in part on this proof, the Supreme Court decided that they were entitled to register the trademark.
In the past, companies assumed that this type of registration would not be allowed. Thus, while many top-level domains for services may have been claimed, there was usually no trademark protection associated therewith. Now, owners of generic domain names may start to try to follow the booking.com lead and attempt to trademark their names. While such inquiries will still be fact sensitive, such registration may have chilling affects on other uses.