Trademarks have always been vital for businesses to protect their intellectual property and brand. Previously, only unique names qualified for trademark protection, while generic terms were excluded. However, the Supreme Court’s landmark decision in United States Patent and Trademark Office vs. Booking.com has changed the rules. Now, businesses can make a trademark for domain names, even if they include generic words combined with “.com.”
The Ruling
On June 30, 2020, the United States Supreme Court ruled that generic words paired with “.com” can qualify for trademark protection. This ruling came from a case involving Booking.com, a popular hotel booking website. Initially, the U.S. Patent and Trademark Office (USPTO) denied their request to make a trademark for their name, arguing that generic terms cannot receive trademark protection.
Booking.com challenged this ruling, claiming that their domain name is distinct and recognizable. The Supreme Court agreed, marking a major change in the criteria required to make a trademark.
How the Votes Fell
The decision was an 8-1 majority, with Justice Ruth Bader Ginsburg writing the majority opinion. Justice Stephen G. Breyer was the sole dissenting judge.
The USPTO relied on a precedent set in Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Company. In that case, the Court ruled that adding “Company” to a generic term like “Shoe” was insufficient to make a trademark. However, the Court now determined that adding “.com” creates a unique identifier, which changes the eligibility for trademark protection.
Trademarking Generic Terms
As a general rule, generic terms cannot qualify for trademark protection. For instance, no company can make a trademark for the word “tissue.” Instead, companies like “Kleenex” create unique names that can be trademarked, while “tissue” remains a general industry term.
These rules are designed to ensure fair competition in the marketplace. Allowing businesses to make a trademark for generic terms would grant them undue control over common industry language and restrict competitors unfairly.
Why Website Names Are Not Generic
Justice Ginsburg and the majority opinion argued that domain names are inherently not generic because they are unique. For instance:
- Only one entity can own a specific domain name such as “Booking.com.”
- Even if multiple businesses provide the same service, there can only be one Booking.com, which makes it distinct enough to make a trademark.
The Court also emphasized that adding “.com” sets a domain name apart from the generic term itself, creating a recognizable and unique brand identifier.
The Dissent
Justice Breyer dissented, expressing concerns about the broader implications of the ruling. He argued that allowing companies to make a trademark for generic terms combined with “.com” could:
- Provide businesses with unfair competitive advantages.
- Lead to monopolization, which goes against the original intent of trademark laws.
Breyer pointed out that short, generic domain names already have a competitive advantage online. Allowing these to be trademarked could restrict market access for smaller businesses.
Repercussions of the Decision
The Supreme Court’s decision has significant implications for businesses looking to make a trademark:
- Trademark Eligibility – Domain names that include generic terms, like “Shoes.com,” may now qualify for trademark protection.
- Brand Protection – Companies can protect their brand identity and prevent competitors from using similar names.
- Market Recognition – Businesses only need to prove that their name is widely recognized to make a trademark for it.
This ruling opens new doors for companies to secure exclusive rights to domain names and solidify their place in the market.
Why You Should Get a Trademark
So if you have a website, why should you bother getting a trademark for it? The simple answer is that it helps you corner your specific place in the industry. If you establish a successful business named Shoe Company, you don’t want a competitor to take advantage of your marketing success to divert attention to their business, The Shoe Company, Inc.
Applying for a trademark is a fairly straightforward process. Most people can complete an application for a trademark online in less than an hour and a half. You will want to check the trademark database before you begin your application, and it’s a good idea to hire an experienced trademark attorney to help you navigate the process.
Learn to Make a Trademark
The Supreme Court’s decision in the Booking.com case has reshaped how businesses can make a trademark for their websites. Now, domain names with generic terms may qualify for trademark protection, opening up new opportunities for businesses to protect their online presence.
If you’re ready to make a trademark for your domain name, let Boyer Law Firm, P.L. guide you through the process. Contact us today for a consultation and ensure your business stays protected.
