Following the trending paradigm on trademark applications, Walgreens, registrants of the domain Beauty.com have applied for the matching mark, BEAUTY.COM, at the United States Patent & Trademark Office.
The trademark application was filed on July 17th, and it’s an “intent to use” application for the following – long – list of products:
International Class 035: Online retail store services in the fields of cosmetics, beauty, skin care, fragrance, and clothing products of others; online retail store services in the fields of cosmetics, beauty, skin care, fragrance, and clothing products; providing purchasing information about fragrances and cosmetic products and accessories; buying club services, namely, a cosmetics and beauty and skin care products club featuring arranging periodic shipment to club members; promoting the goods and services of others by providing a web site featuring product information and reviews, information about consumer purchasing behavior and trends, product how-to articles and videos, discounts and coupons for the goods of others, and links to the retail web sites of others, all in the fields of cosmetics, beauty and skin care products; compiling, analyzing, processing and providing customer preference and product usage data to providers of cosmetics, beauty and skin care products for business purposes; cosmetics; non-medicated cosmetics; make-up; make-up sets; makeup remover; toiletry bags and cases sold filled with non-medicated cosmetics, make-up or make-up sets for storage or transportation; compacts containing makeup; makeup setting sprays; perfume and colognes; essential oils; hair sprays and hair gels; hair care products; facial cleanser; skin cleanser; skin products, namely facial cleanser, skin cleanser, non-medicated anti-aging serum, and moisturizer; candles; perfumed candles; downloadable software to enable uploading, capturing, posting, showing, editing, playing, streaming, viewing, previewing, displaying, tagging, blogging, sharing, manipulating, distributing, publishing, reproducing, and otherwise providing electronic media, multimedia content, videos, movies, pictures, images, text, photos, user-generated content, audio content and information via the internet and other communications networks, all in the field of cosmetics, beauty and skin care products; downloadable software to enable sharing of multimedia content and comments among users; airbrush makeup stencils; facial tissue; paper tissues for cosmetic use; publications in the fields of beauty, fragrance, fashion, and aesthetics; makeup bags sold empty; leather and imitation leather bags; pouches for holding makeup, keys, and other accessories; hairbrushes; brushes, wands, sponges, and swabs for the application of makeup; air brushes for applying makeup; make up brush holders; makeup sponge holders; containers for storing and organizing makeup and beauty products; makeup removing appliances; makeup compacts sold empty; makeup mixing palettes sold empty; dispensers for facial tissue; textile napkins for the removal of makeup; towels; clothing, namely t-shirts, tops, dresses, skirts, undergarments, lingerie, hats, scarves, and robes; educational and entertainment services, namely, organizing live exhibition programs and providing educational demonstrations in the field of cosmetics, beauty, skin, nail and hair care products; organizing live exhibitions and conferences in the field of beauty care for non-business and non-commercial purposes, namely, programs that feature demonstrations and group discussions about beauty products, beauty tips and techniques for educational and entertainment purposes; educational services, namely, conducting conferences in the field of cosmetics, make-up, skin care, hair care and beauty accessories; educational training and services, namely, organizing and developing educational programs and conferences in the field of beauty care directed to amateurs and professionals in the beauty industry; educational services, namely, panel discussions and workshops in the field of developing a business on social media or creating a social media channel; educational services, namely, providing tutorial sessions about application and use of make-up, use of make-up tools, application and use of skin care and hair care products, use of hair accessories, and overall beauty and styling tips and techniques; online journals, namely, video blogs featuring information about application and use of make-up, use of make-up tools, application and use of skin care and hair care products, use of hair accessories, and overall beauty and styling tips and techniques; providing a website featuring non-downloadable instructional videos in the field of application and use of make-up, use of make-up tools, application and use of skin care and hair care products, use of hair accessories, and overall beauty and styling tips and techniques; tutorials and how-to instruction for beauty care, namely beauty arts instruction; providing temporary use of non-downloadable software to enable uploading, capturing, posting, showing, editing, playing, streaming, viewing, previewing, displaying, tagging, blogging, sharing, manipulating, distributing, publishing, reproducing, and otherwise providing electronic media, multimedia content, videos, movies, pictures, images, text, photos, user-generated content, audio content and information via the internet and other communications networks, all in the field of cosmetics, beauty and skin care products; providing temporary use of non-downloadable software to enable sharing of multimedia content and comments among users; hosting of websites featuring multimedia content for others; providing a web site that gives computer users the ability to upload and share user-generated videos, essays and articles in the fields of cosmetics, beauty and skin care products; permanent makeup services; semi-permanent makeup services; personalized beauty care; make-up application of skin care, face care and hair care; consultation services in the field of make-up, namely, on-line makeup consultation services and in-person makeup consultation and application services; make-up application services; online cosmetic skincare consultation services; providing information in the fields of personal appearance, color analysis, and health via a global computer network
The application for BEAUTY.COM as a mark pretty much covers every commercial aspect of beauty products we can imagine of!
Walgreens owns several hundred corporate domains, and the following ones contain the keyword “beauty” as well:
beauty.com – Photo by João Ritter on Unsplash
555-beauty.com
555beauty.com
beauty.com
beautyadvisors.com
beautybalancedewards.com
beautybalancedrewards.com
beautybalanceerewards.com
beautybalancereward.com
beautybalancerewards.com
beautybalancerrewards.com
beautybalancesrewards.com
beautyballancerewards.com
beautyblast.com
beautyenthusiast.com
beautyenthusiastespanol.com
beautyvalancerewards.com
discoverbeautywithin.com
pre-beauty.com
walgreensbeautyadvisor.com
In 2011, Walgreens acquired Drugstore.com and its associate domain names, including Beauty.com. The deal was for $429 million dollars. Five years later, Walgreens shut down Drugstore.com and Beuaty.com as separate storefronts, and both domain names are forwarded to Walgreens.com.
The application for the registration of BEAUTY.COM as a mark, might indicate that Walgreens intends to reverse that decision, and attempt to once again tap an online market dominated by Amazon and Walmart.
This is an indication that corporations are now taking a second look at giving generic .com a more prominent role in their branding as protected intellectual property.
Michael – Well-said!
If what was established in the SCOTUS ruling is followed, then “intent to use” should not even be allowed at all in cases like this, and the TM should not be granted. TM should only be granted when the domain has attained acquired distinctiveness and is firmly associated with the source of goods and services as an actual brand name in the mind of the public. No normal person being honest about it who read anything associated with the Booking.com ruling can come to any other conclusion.
Jack Hammer – It’s not a paradox: intent to use means just that; the applicant has 6 months to demonstrate use of the mark in interstate commerce. However, that can be extended five times! In other words, from the moment of application, a trademark filed with an “intent to use” clause, has 3 years to be actually in use. That’s plenty of time to acquire the distinctiveness that the Booking.com ruling most likely intended to require.
Now I see why some people are so happy about the Booking.com ruling. I don’t like that one bit and regard it as bad, bad for society, and unjust. So as of today, if a domain like EnjoyBeauty.com were available to register and someone decides they want to go into business with it as “EnjoyBeauty.com” and not merely as “Enjoy Beauty” then they are screwed, is that not so?
I.e., of course I mean for the same goods and services.
No, it doesn’t make sense at all. The Booking.com TM was given *because* Booking.com had attained acquired distinctiveness and recognition as a brand through actual use and the demonstrable nature of this attainment, not merely because they had used it or that “Booking.com” is unique. That attainment is something nobody can presume will be the case with any particular domain and therefore claim rights to based on a presumption about the future. “Intent to use” does not apply.
This is a travesty, and makes “Intent to use” into “We declare we know the future and affirm that Beauty.com will unquestionably attain the same type of brand recognition as Booking.com and the few other .com’s awarded TM’s have, and therefore claim rights based on that presumed achievement in advance.” It’s not right. Based on the reasoning of the ruling, they should have to first use the domain as a brand, and then demonstrate that the public has come to recognize it uniquely as their own to a degree which merits awarding a mark.
Jack Hammer – The rules for registering trademarks with the USPTO are the same as before, so “intent to use” is a valid application. What’s different, presumably, after the Booking.com decision, is that the “generic” keyword can be registered *including* the TLD.
The applicant for Beauty.com already owns the domain. They are registering the full domain name, essentially, as their mark.