When is a domain name like wine.com or hotels.com simply a web address, and when can it be registered as a trademark?
In a U.S. Supreme Court case noteworthy as the first ever argued virtually, the Court ruled last month that, because consumers do not understand “booking.com” to be a reference to travel reservation websites generally, the term is not generic and is eligible for trademark protection and registration. To reach that conclusion, the Court rejected the U.S.P.T.O.’s proposed per se rule that a generic term, when combined with the .com top level domain, must automatically be deemed generic and therefore ineligible for trademark protection.
In the latest episode of the McCarthy Institute video podcast series, Director David Franklyn hosts a provocative roundtable discussion with key players in the case including the survey expert whose survey played a prominent role in the briefing, the oral argument, the Court’s decision, and Justice Breyer’s dissent, amici who submitted briefs on both sides of the case, and co-counsel for Booking.com.
They’ll discuss the ramifications of the case – what does it mean for survey and other consumer perception evidence in the future, what is the applicability of the case beyond domain names (and is there anything left to the Supreme Court’s 1888 case finding that a generic term combined with the generic corporate descriptor Company cannot serve as a trademark), and how can brand owners, competitors and consumers navigate the anti-competitive concerns raised by the USPTO and Justice Breyer in the post-Booking.com world.