The LAW FIRM of DAYREL SEWELL, PLLC is pleased to announce that Mr. Dayrel S. Sewell, Esq., MPH, and Ms. Ariel Friedman penned an article entitled, “The Increasing Intellectual Property Value of the .COM to Businesses” that is now published in the Columbia Science and Technology Law Review (STLR). Mr. Sewell is a proud alumnus of Columbia University and Ms. Friedman is currently a Columbia University Law School student interning at our law firm.
The U.S. Supreme Court’s 2020 decision in United States Patent and Trademark Office (USPTO) v. Booking.com demonstrates the changing landscape for trademark law in the internet age. Here, the Court found that a term styled “generic.com” or any other domain name comprised of generic terminology appended by a top-level domain (TLD), such as “.com” or “.net,” may be trademarked if it has a source-identifying, non-generic meaning to consumers.
Writing for the majority in an 8–1 decision, which affirmed the reversal of the TTAB decision, decedent Justice Ruth Bader Ginsburg reasoned that “[b]ecause Booking.com is not a generic name to consumers, it is not generic.” Therefore, BOOKING.COM was eligible for trademark registration. However, Justice Ginsburg reasoned that where a generic term carries a secondary, distinctive, meaning to consumers, it may be eligible for trademark registration as a descriptive mark. Furthermore, the court rejected a per se rule that a generic term combined with a generic top-level domain, such as “.com,” results in a combination that is necessarily generic, reasoning that “[w]hether any given ‘generic.com’ term is generic … depends on whether consumers in fact perceive that term as the name of a class or, instead, as a term capable of distinguishing among members of the class.” For example, the Court noted that the USPTO has granted other “generic.com” marks to the principal and supplemental registers, such as “art.com” and “dating.com.” In other words, whether a term is generic or descriptive with secondary meaning should be sensitive to an analysis of consumer perception.
STLR deals with the exciting legal issues surrounding science and technology and is ranked #6 among all tech law journals. Furthermore, STLR is the first Columbia journal to become formally open access, eliminating unnecessary barriers to readership.
The publication represents the continuation of our firm’s commitment to providing value to a wide audience and to providing excellent service to our clients. As always, we encourage your thoughtful comments and insights on our publication. Thank you.
Kim
The new holding in favor of Bookings.com by the Supreme Court in USPTO v. Booking.com will open a floodgate of trademark applications for generic names appended with “.com”. I agree with the court that it is not per se a generic name if one attempts to trademark a combination of a generic word and a generic top-level domain, especially if the public perceives it as a recognizable class or brand. In order to prevent overuse or misuse of this precedent in the future, USPTO and the courts will necessarily have to set the bar high for “sensitivity to consumer perception and use.” What this standard is and how high the bar will be set, will be a difficult and complicated question for the courts. Even if the generic name plus “.com” is sufficiently perceived by the public as descriptive and distinctive, other anticompetitive consequences will result, as Justice Breyer pointed out in his dissent. For example, other individuals and businesses mainly conducting transactions and promoting services online may not be able to use many generic words to create their website addresses, and will be forced to use lengthy and/or unique combinations of words. This will consequently make it harder for the public to easily remember and recognize businesses’ websites. Another interesting potential side effect would be the introduction of new and different top-level domain names. One day, “.com” may no longer be used as a top-level domain name and we will have to get used to an entirely different top-level domain. With most transactions and services being conducted on the internet nowadays, who owns what name and who is allowed to use which generic word will increasingly become a point of contention.
Jay
It is still too early to tell the true impact of the Bookings.com case. Just because “.com” trademarks are allowed does not mean that they will be granted. Companies must still prove that their “.com” trademark takes on additional trademark meaning in the eyes of consumers. My main concern is how the USPTO and courts will evaluate the vast amount of “.com” applications that will undoubtedly fly in. My concern echoes Justice Breyer’s dissent where he believed that the majority assigned too much weight to the consumer survey evidence. Survey evidence is suspect because companies can easily apply different methods to skew the data. A company can survey people in a specific area where they know that their brand is well known. For example, a brand may only be known by 20% of the U.S. population but is known by 80% of people from a specific region. Surveying mostly in the specific region will result in a showing of greater recognition of the brand as not being generic. Furthermore, it is human nature to tell others what you think they want to hear, also known as acquiescence bias. Acquiescence bias will result in those being surveyed responding with what they think the surveyor wants to hear. For example, a person will be more inclined to say they do not think a brand is generic if they are asked by someone who clearly works for the brand. As a result, companies may be able to manipulate surveys and use clever marketing to obtain trademarks on generic terms. Although there may be instances where a “.com” brand develops organically to warrant a trademark, I fear that the process can easily be manipulated by companies to essentially own generic terms and get a leg up on the market.
Owning a “.com” trademark is significant because it automatically associates the generic product with the trademark. For instance, if I wanted to buy wine, I would likely associate wine with “WINE.com.” This is significant because the internet currently dominates retail. Trademark and brand recognition is a powerful tool and being associated with a generic product has massive benefits. For example, the trademark, “VELCRO,” is so widely recognized that many people do not even know the generic name of the product that they sell. It might shock many, but VELCRO is actually a brand of the product known as the “hook-and-loop fastener.” By being closely associated with the generic product, VELCRO has been able to be a leader in the “hook-and-loop fastener” market. Due to the value of “.com trademarks, companies will have to consider and weigh them into their trademark clearance analysis. As a result, trademark attorneys will likely need to figure out a way to navigate through the new and possibly bumpy “.com” trademark road ahead.