back to article Does a .com suffix make a trademark? The US Supreme Court will decide as Booking marks its legal spot

If you know anything about law it is probably that you can't trademark a generic name. But this week the US Supreme Court heard a case that introduces a fascinating wrinkle in that longstanding rule, courtesy of the internet. The case pitched the US Patent and Trademark Office (PTO) against online booking site Booking.com. You …

  1. Donn Bly

    Trademarking an address

    I would take issue with the PTO explanation on a trademarking an address in "that a street address really only conveys a physical address and nothing bigger". "1 Park Lane" may be part of an identification of a physical location, but every city could have a "1 Park Lane" and only one of them should be able to get a trademark. Domain names aren't like that.

    While I can understand Booking.com wanting a trademark so that they could go after people who are using their name in trade and implying endorsement without their permission - what happens when someone trademarks a domain but then lets the domain expire. Should the next person who registers it be unable to use it because the previous owner trademarked it, even though the mark holder no longer owns it?

    1. tony trolle
      Facepalm

      Re: Trademarking an address

      Well i once had a ,info domain never used it but at the time it could of been useful at that moment in time; 123reg rejected my card payment and I lost it. Currently it's for sale at $5000 by a hopeful.

      If I had the trademark I wonder whats its worth would be ? more or less......

      1. The BigYin

        Re: Trademarking an address

        Top-tip: Never use 123reg. Go with Mythicbeasts or someone else credible, you do get what you pay for.

      2. NeilPost Bronze badge

        Re: Trademarking an address

        Like much for sale at silly prices - not sold.

    2. Kevin Johnston

      Re: Trademarking an address

      I agree with your last part but since every internet presence will include .com or .org or such then the presence of such a suffix in a trademark begs the question of how widely they could enforce it. If they win the fight to trademark booking.com then would a car-hire company or a theatre be blocked from using booking.org or booking.co.uk?

    3. Anonymous Coward
      Anonymous Coward

      Re: Trademarking an address

      Trademarks are only valid so long as the owner makes use of them. If the domain expired and the previous owner made no good-faith attempt to regain control once they found out (eg. it didn't just accidentally lapse and get instantly grabbed by a scammer), then it could be argued that they had abandoned the trademark when they abandoned the domain name.

      Note: "It could be argued". You'd still likely have to defend yourself in court (or to arbitrartors) if the previous trademark owner decides to be a pain about it.

      1. NeilPost Bronze badge

        Re: Trademarking an address

        The Planet Money podcast on Oreo’s competitor Hydrox cookies is a great example here.

        https://www.npr.org/sections/money/2017/08/23/545546014/episode-652-the-hydrox-resurrection

  2. Yet Another Anonymous coward Silver badge

    Actually seems reasonble

    Booking.com means that particular travel website however common the word is on its own.

    It would be like claiming that Ford can't trademark Ford because there are millions of people and places with Ford in the name.

    1. Anonymous Coward
      Anonymous Coward

      Re: Actually seems reasonble

      Copyright, Trademark, & Patents.

      Ignoring fair use, the Ford logo can't be used by anyone else as it's copyright.

      Patents? Go get a license from Ford (or wait for them to expire).

      Trademark I thought was for a specific use. So (crude example) Ford the vehicle company has no hold over Ford the turnip farm as there is no way in heck anyone would confuse the two. If Ford the turnip farm branched out into tractors and started selling the "Ford Tractor" then things would get interesting.

      I see little issue with TMing "booking.com" and only that, no expansion allowed; "abooking.com", "bookings.com", "booking.biz" etc? All not covered by the trademark. Just like the restaurant "1 Park Lane" would have no hold over the greasy spoon at "2 Park Lane", "1 Park Way" or "1 Lark Lane".

      If there are attempts to pass-off "booking.biz" as "booking.com", then you go after them under copyright. The colours, logo, closeness of name etc would all seem to be a better fit for those laws than trademark. Of course, if "booking.biz" is a book-binding company and hee-haw to do with travel, then Booking.com are s.o.l.

      IANAL

      1. Doctor Syntax Silver badge

        Re: Actually seems reasonble

        Just like the restaurant "1 Park Lane" would have no hold over the greasy spoon at "2 Park Lane", "1 Park Way" or "1 Lark Lane".

        Which Park Lane would that be:Abbots Worthy, Aberdeen, Aberdour, Abergaveny or Abram? Other Park Lanes are also available.

        1. EnviableOne Silver badge

          Re: Actually seems reasonble

          Saville Row Suit Co.

          Definatley trading off the reputaion of Saville Row, London, however based in Saville Row, Dublin

      2. NeilPost Bronze badge

        Re: Actually seems reasonble

        ... and it’s the Ford Motor Company.

    2. Anonymous Coward
      Anonymous Coward

      Re: Actually seems reasonble

      Fact is, (despite the leading sentence of the article) you can trademark common or generic words. Microsoft has trademarked windows, Apple has trademarked apple (the word, distinct from the logo), charcoal, aperture, aqua, bonjour, carbon, Chicago, etc (all are registered in the US).

      I'm not sure what the case is in the US, but trademarks generally apply to an area of application (market sector), although some jurisdictions have the exception for really well-known brands that make them apply to sector.

      1. katrinab Silver badge
        Meh

        Re: Actually seems reasonble

        Apple is not a generic word in the fields of computing or recorded music. That might be why they can get the trademark.

        [Apple Music used to be a completely different company with its own trademark registration, hence Apple Computers used iPod / iTunes etc. Apple Computers subsequently came to some sort of deal with Apple Music to allow them to use the Apple brand for their music products.]

      2. General Purpose

        Re: Actually seems reasonble

        Sure, you can trademark common or generic words but not for their common or generic meaning. A double-glazing company couldn't trademark "windows", "apple" couldn't be trademarked by a fruit grower or a greengrocer and Budweiser couldn't trademark "beer" without an unusual degree of honesty.

      3. ExampleOne

        Re: Actually seems reasonble

        It is questionable if the Windows trademark would actually survive a test in court.

        MS did abruptly settle the one test it has had quite late on in proceeding, and the Lindows team did very well indeed out of it, AIUI.

        1. J.G.Harston Silver badge

          Re: Actually seems reasonble

          VAX Computers and VAX Cleaners came to an agreement not to tresspass on each other's product range.

      4. NeilPost Bronze badge

        Re: Actually seems reasonble

        Apple Computer Inc

        I can sell Window’s without threat from Microsoft.

        I could sell Chicago Pizza’s - not Chicago Town - so no worries there.

        Many companies have made up faux heritage - Frankie and Bennie’s for example or Reggae-Reggae Sauce infamously... both Trademarked.

  3. lglethal Silver badge
    Go

    Simple solution

    It seems the obvious solution is that yes you can trademark "booking.com", but that that gives you zero claim on "hotelbooking.com" or any other name that might utilise the words booking.com with them. So "Carbooking.com" is safe as is "booking.company". You have only the rights to "booking.com".

    Job done...

    1. AVee

      Re: Simple solution

      I agree completely.

      However, the question is if that result can be achieved by just a ruling of the Supreme Court. They first and foremost need to apply current law as it is right now. Of course they have some room to decide what is a reasonable interpretation of the current law in this case, perhaps enough. But changes are a change in law is needed to actually get something like this sorted properly.

    2. overunder Silver badge

      Re: Simple solution

      "You have only the rights to "booking.com"."

      Eventually a company/person won't care and use lawyers to harass other companies into submission. If anything, allowing it will only give more ammunition to the unethical. Even if lawyers were free, the unethical would still take that 50/50 chance of success.

  4. The BigYin

    All your name are belong to me

    As the owner of "noun.com", "pronoun.com", "verb.com", "adverb.com" and "adjective.com"; imma gonna come for all your cyber baubles!

  5. Huw D Silver badge

    washingmachine.com lasts longer with calgon.com ?

  6. adfh

    If this passes..

    ... how would it affect international businesses using international domains? Example.com say vs example.com.au

    1. katrinab Silver badge
      Meh

      Re: If this passes..

      I guess I would expect booking.com.au to be the Australian outpost of booking.com serving antipodean tourists, so they might have a claim.

      1. Roland6 Silver badge

        Re: If this passes..

        >I guess I would expect booking.com.au to be the Australian outpost of booking.com serving antipodean tourists, so they might have a claim.

        But you would be totally wrong.

        In general ownership of one label and TLD combination, does not give you any rights over anyother combinations of your chosen label with other TLDs and subdomains. Although given the US seems to think it owns the Internet and that US law applies globally...

        If in doubt I suggest you search back and reread the 'Brexit' articles about the use of .EU domain names currently held by UK companies/individuals that will become available (to EU residents) in the near future when the UK finally completes its withdrawal.

        From the discussion in the article, I suspect a case could be made for trademarking: iCloud.com (and similar) because iCloud is a made-up word.

        What is interesting is that Booking.com BV don't seem to wanting to trademark their business name (or is it already trademarked in the Netherlands and EU?), just their domain name.

  7. Doctor Syntax Silver badge

    Ah, yes. Booking.com. It's a race to set my email address for them to bounce after the confirmation email arrives but before the spam starts.

  8. HildyJ Silver badge
    FAIL

    267

    A simple search for "booking" at the USPTO returns 267 issued trademarks, a number of which seem to refer to travel bookings.

    Booking Holdings, the owner of booking.com, does not have a trademark for its corporate name. They do have a trademark for other services such as Priceline.

    Unless and until the law is changed to permit a specific "generic.com" name to be registered without giving any rights to claim any "<X> generic <X>.com* domains, "booking.com" should be denied a trademark. Mechanisms already exist for them to defend their domain.

    [Fun fact - the generic.com domain does exist and is currently for sale.]

  9. doublelayer Silver badge

    It seems simple, but it must not be

    The logic would seem to be somewhat straightforward, namely that you cannot trademark an obvious term for an obvious purpose, you can trademark a concatenation of two or more obvious terms as long as that concatenation is not itself an obvious term, and trademarking one term does not give you the rights to terms containing that as a substring. Therefore, Apple can trademark "apple" for computer purposes because it doesn't interact with normal apples, but just by doing that, they don't automatically get the rights to "pineapple".

    Since this logic doesn't seem to be completely understood (or possibly completely enacted in the law), there is far too much risk to grant the trademark. If they can, I could do something like register a trademark on short web addresses like g.co or t.co (although those particular ones are already taken by Google and Twitter respectively), and sue bookinG.COm and microsofT.COm for including my trademark in their domain names. So let's find out where the substring rule needs to go in the law or public understand and hammer it in so hard it'll never fall out again.

  10. This post has been deleted by its author

  11. K Cartlidge

    What I'm not clear on ...

    What I'm not clear on is how they can trademark booking.com when they don't actually own it. Nobody who 'buys' a domain name owns it.

    So are they trademarking something which is not their own property?

    1. doublelayer Silver badge

      Re: What I'm not clear on ...

      Well, although they don't own it, nobody else does either and they're the only people who are associated with it. Similarly, Apple as a company does not own anything related to the word "apple", but they are able to trademark it for use with computers because they were the first to use that name. In fact, I don't think trademarked things are ever owned--the trademark is the protection because you can't own short sequences of letters or pixels.

      1. K Cartlidge

        Re: What I'm not clear on ...

        Yeah, sorry, I meant "own" in a more IP-related way rather than physical ownership.

        The fact that when you stop paying registration fees for booking.com you lose the domain name booking.com implies you never owned it to start with and were probably actually renting its use - and can you trademark something you rent from someone else?

        Your point may well still stand, I genuinely don't know - it's tricky using analogies from the real world in the virtual one. It would be interesting to see what the legalities are.

        1. doublelayer Silver badge

          Re: What I'm not clear on ...

          Sorry to be vague. I was also referring to ownership in an IP sense. Apple doesn't have any ownership over the word "apple" because that would be ridiculous. Also, there are generally limits on how original and thus long you have to be to have any copyright ownership. So in general I think things getting a trademark don't have any other ownership, physical or intellectual, attached to them. Just using it for some purpose and having nobody else use it for a similar purpose is sufficient to ask for one, subject to some extra restrictions about what you'll eventually get.

          The reason I think this is the other things that people have trademarked. As the article points out, phone numbers that are attached to a brand can be trademarked, but they don't own that either. Though there are various reasons to balk about granting their trademark request, I don't think that is one of them--if they relinquished the domain name, then they wouldn't be using that trademark anymore (debatable, but almost certainly), and trademark rights expire automatically if you stop using them.

  12. fireflies

    Protection where its required

    I can imagine the primary concern of companies like booking.com is when search engines and so forth allow "sponsored" (give us money and we'll let you commit whatever fraud you want) results to feature at the top when people search for key words like "booking.com"

    Sadly, it seems that the do no evil search engine is worse at this than microsoft's offering - as evidenced by a search for an oft used link to activate a recent internet security purchase.

    But ultimately, when web browsers have a predeliction for redirecting obvious website addresses to search engines, it's nothing short of irresponsible when search engines fail to offer the precise link as their first result, and in many cases, offer a different website that has intentions to commit fraud.

    1. J. Cook Silver badge
      Devil

      Re: Protection where its required

      Some ISPs *still* do this as well.

      'Oh, you wanted to go to [site] that's temporarily offline for whatever reason? I'll redirect you to yahoo!'s search page, even though you've wanted nothing to do with them for the last decade!'

  13. a_yank_lurker Silver badge

    Interesting

    Oh, how the arcane rules trip up the unwary and uninitiated. One point about trademarks is they are used to protect the brand from con artists and other assorted low lifes. So the question is 'Booking.com' a brand that needs protection so some slime could not try to confuse the public. I think that can be argued both ways in which case I would say grant the trademark. Now the USPTO rules say this can be a trademark but me thinks the dim bulbs there have not thought through the rules completely but that's what mindless bureaucrats do best.

    There is the issue of 'booking.co.ca' and the like and how would they be treated as a trademark as they would very similar to 'booking.com' itself. This is an interesting thicket as .com is often US based while .co.xx is based in another country. I do not what the various treaties say about trademarks and infringement and if they actually even cover this situation.

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