Facebook.com appears not to belong to Facebook if anyone is interested.
The internet's domain names have become potentially trademarkable following a decision by the US Supreme Court today that Booking.com can in fact be registered with America's Patent and Trademark Office (PTO) – against officials' objections. The near-unanimous decision [PDF] – Justice Stephen Breyer was the sole rebel – went …
This is interesting stuff. Both sides have good points to make. I'm not sure I agree wholeheartedly with Sotomayor's argument about a term gaining the ability to be trademarked by transitioning from e.g. washing machine to washingmachine.com by virtue of usage. To me, "booking.com" does have a particular individual character - I would ask if a place was booked through booking.com, or TripAdvisor, or Airbnb, for example. Note that I use the url for the first - just to say "Is it booked through booking?" makes no sense. I can't see a situation where most terms would become that sort of unique identifier, but, if it did, then there would be a transition from $term to potentially trademarkable identifier.
Maybe if, when a company starts up, they call themselves "something.com" and that is the name they trade under, then it can become a trademark.
However, if the company is called "something" when it starts up then something.com can NOT become a trademark. For example, Marks & Spencer's online presence is at marksandspencer.com but they shouldn't be able to trademark marksandspencer.com because that ISN'T their company name.
"Both sides have good points to make."
Agreed. I think the problem is that the law doesn't easily handle "I know it when I see it". It seems obvious that booking.com is used as a brand and company name and should therefore be trademarkable, while washingmachine.com isn't and therefore shouldn't. But how do you define the difference between them in an objective law such that a reasonable person will always reach the same decision for any given term?
The specific descision for booking.com seems fair enough, but the precedent it sets seems likely to cause all kinds of trouble in the future as people try to exploit the idea.
> The Court confirmed that the consumer is king when it comes to brand names, and if consumers perceive a term to be a brand name and not merely a generic or descriptive reference, then that name is entitled to trademark protection.
So to take that in reverse, because most people use the word Hoover as a generic term the company Hoover should lose their trademark. Dyson can now sell Dyson Hoovers instead of Vacuum Cleaners? I think not.
That's pretty much what can happen. Companies at risk of becoming a "generic trademark" (you can google that on Bing if you like) usually try to avoid it, but it does happen. The Reg journos can probably tell us if Google still contact them asking them to use the phrase "perform a Google(TM) search for" instead of "google". They certainly used to.
But the more people talk about doing the hoovering using a Dyson or Electrolux hoover, the less grip Hoover have on the word. It can even change between countries. I think that xerox machine became the generic term in the US. In the UK they are always called photocopiers. I don't think I've ever seen a Xerox(TM)-made one.
Many terms for products were originally trademarks for a brand. If a company does not vigorously protect its trademarks it will lose them in due time. But the point of trademarks is protect people from being confused by similar sounding frauds in a market. A simple concept but one that is rather messy in its details.
No matter what the Nine Seniles ruled there will still be plenty of trademark litigation as to when someone has stepped over the line and to some extent exactly where the line is.
Did the court consider even the longer standing options for TLDs? Do Booking.com have any rights over someone using booking.co.uk or booking.org? What if said company does not have any overlap with the booking.com offerings?
This is Pandora's can of rapacious carnivorous worms being opened
Logically, this decision should have benefits for that. Someone trying to trademark "Booking" might have problems with holders of booking.*, assuming they managed to get past the generic term test. Someone trademarking "booking.com" would not overlap with someone with booking.[something else]. Of course, there's also the issue of trademarks in other countries which could go in a very different way.
The decision can be made based on a survey because the law is about what users think. The law considers, for example, whether something is likely to confuse consumers, which you can't just encode into legislation. It also allows for trademarks to be removed if consumers have come to think of the term as generic, which likewise means that you have to find out what consumers think. The means to do that is to ask them.
"It also allows for trademarks to be removed if consumers have come to think of the term as generic"
As I mentioned in another post a few days ago, I'm hearing more and more people refer to pretty much any tablet computer as an iPad these days. I'm very confused as to what an iPad is now so clearly the name iPad should not be trademarked. Likewise, I've hear people refer to things being "on my iPhone" when clearly it's a Samsung Galaxy in their hand.
"If someone were to start a company called ‘Washingmachine.com,’ it could likely secure a similar level of consumer identification by investing heavily in advertising. Would that somehow transform the nature of the term itself? Surely not.”
Surely yes? 25 years ago, if you ask someone what they associated with the word "Amazon", they would say it is a rainforest in Brazil. Now they would say it is an online retailer. That means that Amazon is now a trademark in the field of retailing.
The domains are rented for a fee for a defined period.
What is to stop the registrar for that tld upping specific fees so that on renewal it is a couple of hundred or more K per year for Booking.
If it is not renewed it is not a major issue with the registrar but stuffs the company!
Also the company in question do not own the internet or even part of it, so how can they legally trademark something they do not own.
Registrars can already do that; you don't need a domain to be trademarked for that domain to be valuable. If one registrar decides to extort a user, they have that ability. Regulations try to prevent it, but not all of those regulations work.
As for ownership, things that are trademarked are never owned. Trademarks apply to things so small that you can't own it. Apple, the computer people, don't own the word or concept of an apple. Their trademark rights say that they can prevent people from using the word to name other computer products so people don't become confused about who actually made the thing. That right isn't perpetual or unlimited, and it in no way means they gain ownership over the word. Similarly, someone using a domain name as a trademark doesn't need to own a domain name, which of course they can't do anyway. If they don't have that domain name, their trademark application would likely be rejected because someone is already using the phrase; that would be a good thing to make explicit in law. That's why we have trademarks: to clarify who is using a thing that can't really be owned.
Booking.com forget to pay the fee for the domain? No, not that farfetched - even Microsoft forgot, and more than once. So, if the domain is a trademark, will the registrar (or a "drop registrar" as the case may be) be able to release the domain and transfer it to someone else, or will the trademark holder say, "Hey, no one but us can use it!"
Basically, a domain is a rather valuable property. Effectively, Booking Holdings (that's the company, not "Booking.com") pay the managing entity (the registrar) a fee for the right to use the domain name. Stop paying and you lose this right. A part of that "rent" goes to VeriSign who operate the .com TLD (among others). There is also ICANN. There are auctions, "high frequency trading" (by drop registrars) and other processes that are managed within this rather non-trivial infrastructure. Does the court's decision throw a big spanner into the wheels of this machine? The mechanism for registering a trademark has been completely independent from domain name management until now. How will it all be reconciled?
I think it would depend a lot on the expiration policy, and I don't know what that is for .com. If it worked like .uk, then their domain does not go on the open market until it has been disconnected for three months. If .com works like that, then my guess is that, should someone buy it after that period of disconnection, then the original trademark owner would be seen as not having protected their trademark. Trademarks that are left unprotected are considered abandoned and lost. If you do a search on the public trademarks database, you'll see lots of historical listings that were abandoned by their holders or taken off them. It'd probably happen this time too. Things become more difficult if .com simply expires the domain and immediately makes it available for sale. That might lead to ambiguity and legal fights.
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