Outside.com received a registration certificate from the USPTO, for the matching mark: OUTSIDE.COM.
The trademark was issued for on-line retail store services featuring live plants; Operating an on-line shopping site in the field of live plants. The registrant cited 2018 as the year of first use for the mark. This indicates that a domain sale might have occurred at the time.
We referenced the application for the registration of OUTSIDE.COM last August, following the positive SCOTUS decision on the BOOKING.COM mark debacle.
OUTSIDE.COM is now a registered trademark
Why was OUTSIDE.COM applied for as a trademark at the USPTO?
It’s an ongoing trend among owners of generic domain names, following the decision by SCOTUS on the Booking.com trademark application.
Since then, dozens of generic domain names have been applied to be registered as trademarks, inclusive of the TLD. We keep track of these applications, and so far none has been decided upon.
As of January 5th, 2021, BOOKING.COM is a registered trademark with the USPTO.
Will these applications become the new norm? Watch this video from NamesCon Online 2020.
It is useful to read about domain names that have applied for or received trademark registration. Thank you for that.
However I would point out that the OUTSIDE.COM trademark really doesn’t appear related to the SCOTUS decision in the Booking.com case. The reason is that the domain name Outside.com is “generic” in domain name parlance as it is dictionary word, but OUTSIDE.COM is not generic in the trademark sense when applied to an “On-line retail store services featuring live plant”. The reason is that OUTSIDE.COM is not the generic term for an online plant retail store. Moreover, OUTSIDE.COM isn’t even descriptive of an online plant store. At most, OUTSIDE.COM is merely suggestive.
There is no prohibition on trademarking a dictionary word. For example, APPLE for computer equipment. There is also no prohibition on trademarking a dictionary word .com such as Black,.com which is registered for telecommunications services. The difficulty is only when it comes to trademarking a dictionary word or a dictionary word .com when the word is the generic term for the good or service, or is descriptive of it or its nature. That is not the case here.
Zak, many thanks for your expert feedback!