news Booking.com case picked up by Supreme Court

Imagine being able to trademark a name because you added a .com lol

the ending ".com" is never part of a trademark.
I agree, this fake trademark should be cancelled.


Li-Ka-Shing, the owner of Booking.com should know already how trademarks work...

https://en.wikipedia.org/wiki/Li_Ka-shing

Apparently there are several other companies that were able to get their .com trademark, so I was wrong about that. Here are some of the ones mentioned in the petition by Booking.com:

Staples.com
Weather.com
Ancestry.com
Answers.com
Scuba.com
LOCAL.COM
WORKOUT.COM
DEALER.COM
DIAPERS.COM
SKI.COM
Entertainment.com
register.com
tutor.com
dictionary.com

I also found this footnote quite interesting:
5 Furthermore, while the PTO expresses concern for “competitors operating domain names such as ‘roomsbooking.com,’ ‘hotelbooking.com,’ ‘ebooking.biz,’” and ebooking.com, notably, none of these entities opposed Booking.com’s applications when they were published for opposition.

Thanks for sharing this.

That is bullcrap... If booking is a generic term, then so is apple, so is amazon and other fruits / rivers or anyother trademark that is a general term.

cipcip said:

If booking is a generic term, then so is apple, so is amazon...

Click to expand...

This is another common domainer misconception about trademarks. Trademarks are not monopolies in the trademark terms. It is useful to think of a trademark as having two parts:

(a) the term itself PLUS (b) the goods or services for which it is a trademark.

In other words, when someone say "X is a trademark", you should ask yourself what is it a trademark for.

The word "apple" is a generic word for apples. The trademark "apple" is a trademark for computers, music services, and the other various goods and services of the well-known computer company.

The word "tide" is a generic word for what the gravity of the moon and sun do to the sea. The trademark "tide" is a trademark for laundry detergent.

The point that cipcip is missing is that you cannot get a trademark for "apple" to sell apples.

You cannot get a trademark for "bud" to sell flowers. You can get a trademark for "bud" to sell beer.

Now, there is an additional layer of considerations when we are talking about marks that are famous or inherently distinctive. A famous mark would be, for example, Coca-Cola. If you were to use Coca-Cola as a brand for, say, shoes, then you would have a problem. That mark is so well known that its use on just about anything would probably be understood by consumers as having originated with the soft drink maker. Similarly, inherently distinctive marks, such as made-up word like XEROX, have no other meaning than as a reference to the goods or services of that company.

Thank you @jberryhill

That is a real good explanation and really helpful for other domainers.

Thanks,
Cristian

Are the generic words + dotcom examples wordmarks or figurative? Seems like this information was omitted in the article.

thx

very interesting read

every TM should be the same

trelgor said:

Are the generic words + dotcom examples wordmarks or figurative? Seems like this information was omitted in the article.

Click to expand...

I looked through TESS and found these:

Staples.com - typed drawing, which I think is the equivalent to a standard character mark (word mark)
Weather.com - word mark
Ancestry.com - word mark
Answers.com - word mark
Scuba.com - word mark; the registration for this one actually appears to be cancelled according to the latest office action (10/8/19), it says it was issued inadvertently.
LOCAL.COM - word mark, but no longer active
WORKOUT.COM - word mark
DEALER.COM - word mark
DIAPERS.COM - word mark (TM notably does not cover diapers or diaper cream, only OTHER baby products)
SKI.COM - word mark
Entertainment.com - word mark
register.com - word mark
tutor.com - word mark (TM for research and reference services, not tutoring)
dictionary.com - word mark (TM for online games and advertising services, not for word definitions)

I would think the closest one to being as generic/descriptive as booking.com (for booking services) would be diapers.com. And they specifically exclude diapers and diaper-related products in the covered goods and services.

jberryhill said:

This is another common domainer misconception about trademarks. Trademarks are not monopolies in the trademark terms. It is useful to think of a trademark as having two parts

The word "apple" is a generic word for apples. The trademark "apple" is a trademark for computers, music services, and the other various goods and services of the well-known computer company.

The point that cipcip is missing is that you cannot get a trademark for "apple" to sell apples.

Click to expand...

So you’d agree that booking.com should not be awarded a TM for the sole purpose of “booking” reservations?

My take is that they absolutely should not be able to hold a TM for such a service.