The US Supreme Court today affirmed that the domain name “booking.com” can be registered as a trademark (BOOKING.COM) instead of seen as merely a generic domain name.
The decision should be well-perceived by many domain name investors that hold generic domain names. But a little detail hidden in the decision determines which domains qualify as such – those that distinguish themselves among the class described by the generic.
Says the decision:
While we reject the rule proffered by the PTO that “generic.com” terms are generic names, we do not embrace a rule automatically classifying such terms as nongeneric. Whether any given “generic.com” term is generic, we hold, depends on whether consumers in fact perceive that term as the name of a class or, instead, as a term capable of distinguishing among members of the class.
In other words, to get a trademark registration for your generic domain that includes the TLD – presumably, .com – the term itself should not only pass the requirements of use through interstate commerce, it must also pass the consumer recognition test as a unique brand, product, and service.
Otherwise, get prepared to fight your way through the USPTO and to the Supreme Court, like BOOKING.COM did.
Domain law.
