NameSilo

The Parameters of Generic Marks: Booking.com before the Supreme Court

Labeled as information in Domain Industry News, started by equity78, May 17, 2020

Replies:
9
Views:
370

  1. equity78

    equity78 Top Member TheDomains Staff TLDInvestors.com PRO VIP ★★★★★★★★★★

    Posts:
    14,795
    Likes Received:
    17,019
    The Lanham Act (“Act”) makes it clear that generic terms cannot be registered as trademarks. But can an online business create a protectable trademark by adding a generic top-level domain (e.g., “.com”) to an otherwise generic term? The Supreme Court will answer this question in USPTO v. Booking.com, No. 19-46.

    The legal battle between Booking.com and the U.S. Patent and Trademark Office (“USPTO”) began almost a decade ago. In 2011 and 2012, Booking.com, a leading hotel accommodations company, filed four trademark applications for BOOKING.COM. Booking.com sought to register both the word mark and stylized versions of the mark. The USPTO examiner rejected these applications, finding the marks generic. Alternatively, the examiner concluded that the marks were descriptive and Booking.com had not shown that the marks had acquired secondary meaning, and the marks were merely descriptive.

    Read more https://www.jdsupra.com/legalnews/the-parameters-of-generic-marks-booking-68026/
     
    The views expressed on this page by users and staff are their own, not those of NamePros.
  2. Keith

    Keith Top Contributor VIP ★★★★★★★★★★

    Posts:
    9,101
    Likes Received:
    9,949
    I think they will lose and the TMs will not be awarded. You shouldn’t be able to TM “chairs” to sell chairs imo.
     
  3. Randy Barnes

    Randy Barnes New Member

    Posts:
    8
    Likes Received:
    5
    They shouldn't be awarded please
     
  4. uzver

    uzver Established Member PRO

    Posts:
    311
    Likes Received:
    1,293
    Nice read.

    I hope Booking will lose. It’s such a slippery slope otherwise.
     
  5. Keith

    Keith Top Contributor VIP ★★★★★★★★★★

    Posts:
    9,101
    Likes Received:
    9,949
    If they win they could take any extension away from owners. Say you own booking.org and use it for real estate purposes - they would easily win a dispute if the TMs are awarded.

    They really have to lose or it’s bad news across the board.
     
  6. equity78

    equity78 Top Member TheDomains Staff TLDInvestors.com PRO VIP ★★★★★★★★★★

    Posts:
    14,795
    Likes Received:
    17,019
    @GeorgeK and I discussed this a few weeks back he felt there would be some measures put in place to not overreach but who knows. The ICA is backing booking.coms position.
     
  7. GeorgeK

    GeorgeK Leap.com PRO VIP ★★★★★★★★★★

    Posts:
    321
    Likes Received:
    1,469
    No one knows for sure.... I would hope that they make a decision that prevents overreach, but still permits the trademark registrations. I'm going to guess that Booking.com wins the case (6-3), given that it's a pro business court at present (and Booking.com did win at the lower courts).

    But I feel less confident now than I did before the court hearing, as the USPTO made a lot of strong points during the oral arguments.
     
    Last edited: May 18, 2020
  8. uzver

    uzver Established Member PRO

    Posts:
    311
    Likes Received:
    1,293
    But why?

    It means ICA is against USPTO arguments like this:

    The USPTO pointed out that the Fourth Circuit’s decision threatens significant anticompetitive consequences because it permits individuals or entities to monopolize language by obtaining the contractual rights to “generic.com” domain names and then leveraging those domain names into protected trademarks. It explained that the online context makes trademark registration of “generic.com” terms particularly problematic, where under the domain-name system, only one entity can have contractual rights to use a particular domain name at a given time. That functional feature of the Internet, claimed the USPTO, already gives significant competitive advantages to entities that obtain “generic.com” domain names. Indeed, the USPTO argued, treating BOOKING.COM as a protectable trademark would allow a single entity to monopolize the term “booking” with respect to the relevant online services and impede Booking.com’s competitors from using it in their own domain names. The USPTO concluded that such protection threatens to preclude competitors from calling their products and services by their common names, thereby diminishing competition and harming consumers.”
     
    Last edited: May 18, 2020
  9. uzver

    uzver Established Member PRO

    Posts:
    311
    Likes Received:
    1,293
    Exactly.
     
  10. IronPlanet

    IronPlanet New Member

    Posts:
    1
    Likes Received:
    0
    What if I own booking.team and use it for recording players given yellow and red cards in soccer matches?
     

Want to reply or ask your own question?

It only takes a minute to sign up – and it's free!
Topics / Tags:
NameWorth
  1. NamePros uses cookies and similar technologies. By using this site, you are agreeing to our privacy policy, terms, and use of cookies.
    Dismiss Notice
Loading...