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news Booking.com Entitled To Trademark -- possibly huge for elite "generic" .com domains

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I noticed this news story, which is potentially a big win for "generic" .com domain name owners, since the domains might previously have been unable to be trademarked. If this decision survives any appeals, then the valuation of elite generic .com domains just increased.

https://www.mediapost.com/publications/article/305749/bookingcom-entitled-to-trademark.html
https://cases.justia.com/federal/district-courts/virginia/vaedce/1:2016cv00425/342093/87/0.pdf

"In a surprising decision, a federal trial judge has ruled that online hotel reservation service Booking.com is entitled to trademark protection for its name.

The decision, issued last week by U.S. District Court Judge Leonie Brinkema in Alexandria, Virginia, appears to contradict at least two other opinions issued by a federal appellate court, which ruled that generic terms followed by ".com" are not eligible for trademarks.
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Brinkema found that although the word "booking" is generic, adding the top-level domain ".com" entitled the company to trademark protection.

She said in the ruling that the risk of consumer confusion or monopolies is "remote."
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This opinion opens up the door for all of those 'noun-dot-com' tradenames to be potentially registerable," he says."
 
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In between the district court and the Supreme Court, this case made a stop at the intermediate appeals court (the Fourth Circuit Court of Appeals) for a 2-1 decision before a three judge panel that has a good synopsis of both sides of this argument:

http://www.ca4.uscourts.gov/opinions/172458.P.pdf
 
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Great thread. The idea that a generic term can become a protected mark in this way seems a bit absurd. There would be prior art as regards "booking" or "bookings", so you would think that would be enough...

Of course, there is that rather large company in Redmond, WA, if memory serves properly (and it may not), who did successfully trademark the name Windows.

Here's to hoping that nobody finds accommodations.net or boots.net either suggestive, or arbitrary or fanciful. ;)
 
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Great thread. The idea that a generic term can become a protected mark in this way seems a bit absurd.

I respectfully disagree, and hope that Booking.com wins at the Supreme Court (should SCOTUS decide to hear the case).

For example, let's suppose someone sends out spam as "Booking.com news update" in the subject, and links in the body of the message to some other website (not the real Booking.com). Why wouldn't that be TM infringement, with the relevant TM being "Booking.com" ??
 
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I respectfully disagree, and hope that Booking.com wins at the Supreme Court (should SCOTUS decide to hear the case).

For example, let's suppose someone sends out spam as "Booking.com news update" in the subject, and links in the body of the message to some other website (not the real Booking.com). Why wouldn't that be TM infringement, with the relevant TM being "Booking.com" ??

If we are speaking of the name Booking.com rather than just Booking, of course I agree. Booking is a generic term, while Booking.com is a single unique thing. Sorry if I got a bit confused as to your point earlier. I thought we were looking at the generic name booking rather than the domain name booking.com - I found the trademarking of a generic word problematic, not that of a generic domain to its current holders.
 
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The idea that a generic term can become a protected mark in this way seems a bit absurd.

Yeah, it would be like someone mixing coca and cola in a drink and calling that a trademark.
 
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Yeah, it would be like someone mixing coca and cola in a drink and calling that a trademark.
I should have phrased it as a generic word, rather than a generic term. You make a good point. That said, the word cola really isn't a trademarked word, as it is a generic word for the very same soft drink nor is coca to my knowledge. Coke seems another odd trademark, but there it is.
 
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