Tuesday, June 30, 2020


Today, the Supreme Court ruled (8-1) that merely adding ".com" to a generic term may allow the combination to be protected as a non-generic trademark. In other words, adding ".com" can confer meaning to the consuming public, and thus is not the same as adding "company" or "inc," which does not confer meaning. That was really the linguistic question in the case. Case law has long held that "Booking, Inc." is really "Booking." So, is "Booking.com" also "Booking"? Or is it "Booking.com"?

As a reminder, a mark is generic when it describes what the product is, and not who makes the product. So, Booking.com would refer to a single company (who) that makes bookings, and not to just any booking company (what). A generic term might be lawyer - it refers to what (legal services) and not to who (there are many lawyers). As the Court puts it, Travelocity is a booking company, but is it a booking.com company?

I signed on to an amicus brief supporting Booking.com, and I'll tell a story why (and why I so keenly followed this case). Way back in the beginning of the commercial internet, my firm registered the domain computerlaw.com. This was a big deal - making it work for email required complicated email gateways, etc. I hadn't even gone to law school yet, and I was in charge of setting it up. Connectivity looked a lot different for a small firm in 1994 than it does now.

We were proud of this, and we used the domain as a mark - put it right on the letterhead "computerlaw.com." In 1995, we filed for a California trademark registration, and received pushback much like the PTO. Our response was that adding .com meant something - that we were wired, connected no less. We pointed out that a big commercial of the time advertised "Nasdaq......dot com" in an effort to show how the Nasdaq was wired. We were successful - California registered the mark and it is valid to this day.

So, in 2000, after five years of use (which we believed would give us a presumption of secondary meaning), we filed with the U.S. PTO. The Trademark Office sat on the application for nearly three years, before finally rejecting the mark as generic, sending us a Google search of many people referring to "computer law." We argued that first, computerlaw is different from computer law, and second, that the ".com" means something. We argued to no avail - the examiner stated that the domain name rendered the elimination of the space meaningless, and also ignored the .com as if it weren't there. The killer was the generic finding (as opposed to merely descriptive), because we couldn't even gather evidence of secondary meaning of the mark, with or without the .com.

I wanted to fight this ruling, but I was sadly outvoted. But now the firm is ready to file again - Booking.com fought the battle instead, only some fifteen years later.

And so, the Court ruled that consumer perception controls whether a mark such as BOOKING.COM or COMPUTERLAW.COM is a what or a who, and we don't ask whether BOOKING or COMPUTER LAW is the what or who.

Justice Breyer wrote a dissent for his single vote to the contrary. In his view, there are times when consumer perception might associate a name with a product, but the name is generic anyway. He cites Kellogg Co. v. National Biscuit Co., 305 U.S. 111 (1938) for this proposition. In that case, Nabisco had used "shredded wheat" exclusively for a number of years while a patent on the cereal was in force. After patent expiration, Kellogg wanted to use the mark, and the Court agreed that Kellogg's could - shredded wheat was what had been patented, and as a result Nabisco could not claim exclusive ownership even if people before that time had only associated shredded wheat with Nabisco.

I don't see Justice Breyer's concern as fundamentally at odds with the majority's preference for consumer perception. The Court did not rule that the mark was automatically nongeneric - that's a question of fact. Just as any apparently non-generic term might be deemed generic, so too might the same term with a .com attached to it. There's no reason why booking.com should get more or less consideration than shredded wheat got. Indeed, this one sentence says it all: "True, few would call Travelocity a 'Booking.com.'" QED. That's the definition of what it means to be generic. People did call the cereal "shredded wheat," because that's what it was.

It is in the examples used to avoid this conclusion that Justice Breyer loses me. 
-"Just as 'Wine Company' expresses the generic concept of a company that deals in wine, 'wine.com' connotes only a website that does the same."  Well, yes, but it connotes one particular website - and no other website with that name - that does the same. I've always called this the Highlander rule of domain name trademarks - there can be only one.

-"The meaning conveyed by 'Booking.com' is no more and no less than a website associated with its generic second-level domain, 'booking.'" Well, yes, but there is only one website, and it advertises itself so consumers know to go there instead of other booking sites that have different names.

-Justice Breyer points to the fact that 33% of survey takers thought "washingmachine.com" (a fake domain) was distinctive while the rest thought it was generic. Justice Breyer thought this was evidence of a problem, but I take it as evidence that ".com" means something - when you have the domain, you're the only one using it to sell stuff. There is no way that survey takers suddenly thought "washing machine" was distinctive.

-"Still, the term 'Wine, Inc.' is generic because it signifies only a company incorporated for that purpose." This is the big issue - is .com the same as "Inc." or "Co."? I think not for the same reason the majority states - domain names are unique. But more broadly, it may be that the Inc. becomes part of a distinctive name such that consumers can distinguish the Wine Company from any Wine Company.  And then the Supreme Court precedent on this would have to be overruled (maybe - a search of "Company" in TESS yields more than 50,000 results). In any event, the Court dodged the question today. In my mind, the primary problem with corporate designations is that multiple companies can use the generic word plus "incorporated" in 50 different states. Even if only one of them becomes well enough known to be distinctive, it limits the amount of words available to other companies, and might allow for the first to reach distinctiveness to lock-out the other 49 companies with the same generic name.

Thus, the bigger concern, I think, is that owners of now distinctive domain name marks might now enforce against those not using the domain name to limit generic word usage. Can booking.com sue a company using the slogan "Booking Bonanza"? I think probably not. Can "WashingMachine.com" sue Home Depot for sale of washing machines? No. The domain name mark will necessarily be narrow, especially if it is a generic.com. It may seem unfair that the first to a generic.com domain name is able to get trademark rights, but such was life on the internet in the 1990s. But that should not be compounded by enforcing generic words against others - only that others cannot use the domain name mark in an infringing way.

Which leads to the last question - what about Booking.info, Booking.biz, etc.? I think these are fair game for competitors. Live by the uniqueness, die by the uniqueness. (Booking.com bought those two domains, by the way.) This might also apply to foreign domains. At my firm, we routinely got email intended for computerlaw.com.au - an Australian law firm that took computer cases. 

The whole opinion is an interesting read. We'll see whether the dot-com trademark registration boom occurs, or whether the marks are too narrow to generate significant value.

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