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Written by : Irmgard Cecere
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hi this is Dan Smith of DPS legal counsel and welcome to today's episode of business is more exciting than any game today I want to talk about trademarks and in particular I want to talk about a case that's going to be coming up this year in the US Supreme Court involving the well-known travel website booking.com booking.com attempted to get a registered trademark for its name booking.com but was turned down by the United States Patent and Trademark Office it appealed that decision to the trademark trial and appeal board it was again turned down by the trademark trial and appeal board the reason that the USPTO and the trademark trial and appeal board turned down booking.com application for a registered trademark for its name booking.com is because it was determined by the USPTO the US Patent and Trademark Office that the name booking.com was generic and if you have a trademark application for a generic requested trademark it will be turned down the company booking.com argued that the name was descriptive and in particular the the issue kind of became whether the addition of the.com to the name bookings may have changed a what would be a generic name booking which is generic to the suit to the to the service of doing hotel bookings the name booking just means bookings for hotels and so that does appear to be generic and that sense but the question was whether the addition of dot-com to booking changed that generic miss booking to something that is descriptive and in which someone who is who sees or goes to a site called booking.com understands that the source of those services is that particular company booking.com in other words can you can you change what would otherwise be a generic trademark to a non-generic trademark and thereby be allowed to get a registered trademark if you just add the additional language for your website dot-com so if you had for example a website or if you had a company called and I'm just throwing out an example don't know if this is even a company or not but if you had if you had any if you had a company called tables and if you had a if you've got a registered if you got a domain for that on the internet for tables dot-com could you get a registered trademark for tables com where you might not be able to and shouldn't be able to get a trademark from tables because it's generic so the question is whether you can just convert a generic trademark to a non-generic descriptive trademark by adding the dot-com to the name the US Supreme Court has agreed to hear that case and that case will be heard this coming year it's going to be very interesting it's going to be important for companies to know whether they can get a trademark for something that would otherwise be a generic trademark by simply getting the top-level domain for that name that generic name dot-com and being able then to apply for the trademark as whatever it is generic dot-com so we'll see we'll follow that but it's important for businesses who are looking to brand to know what the parameters are for getting a trademark for their company so I hope that helps if you have any questions please feel free to get in touch and we'll talk to you next time Thanks
Thanks for your comment Chadwick Sultzer, have a nice day.
- Irmgard Cecere, Staff Member
can you use a generic term plus.com as a trademark well the supreme court's just ruled on that and i'm going to talk about it over the next four minutes i'm angela langlotz trademark and copyright attorney and i go live here on weekdays to talk trademarks and copyrights so don't forget to smash the like button and subscribe if you'd like more of these videos in your feed so last week i believe it was the supremes ruled that it is perfectly okay to use a generic term plus a.com as a trademark now why why do we not allow generic terms as trademarks well remember that a trademark is a source identifier that means that when i look at that brand i know which company those goods or those services are coming from and trademarks should be distinctive they should identify a source and if you have a generic word like booking for travel booking services that is a generic term so we can't use that because it would prevent other people from fairly describing their goods right so they couldn't say i have a booking site right because then the people who had the booking trademark would get all upset and say well you're infringing our trademark because we have a trademark on booking for booking travel services so you can see why that doesn't work but if you add a dot-com on the end and the consumer sees that dot com the whole term dot com like booking.com as a source identifier meaning they know exactly what company is providing or offering those services now you can use it as a trademark it used to be that you you couldn't do that there was a split in the circuits one circuit said yes the patent and trademark office said no so the supreme court said well we're gonna decide and they decided they said look if the consumers view that as a source identifier then it is now a trademark remember trademarks are very consumer focused we want to make sure that consumers are not confused right that consumers understand the relationship between the trademark and the company that's offering the goods and services and that the trademark serves to distinguish those goods and services from other goods and services available in the marketplace so the supreme court said listen this is a this this trademark is booking.com there can only be one booking.com because there's only one dot-com domain available booking.com it is one source right so they reasoned to they said booking.com did a survey and consumers identified booking.com as a source for travel bookings so therefore booking.com can serve as a trademark so that's the new news under certain circumstances and you may have to prove by a survey that consumers view your.com as an actual trademark as an actual source identifier you may have to prove that with a survey but it is possible now the word is official to use a generic term plus a.com for a trademark for your goods or services i'm angela langlotz i'm a trademark and copyright attorney and i go live here again share this video if you think people might find it useful smash the like button and subscribe and you will see me every weekday here talking about trademarks and copyrights you can also find me online at trademarkdoctor.net drop any trademark or copyright questions you might have into the comments and i will answer them on a future live video
Thanks lygivitniw your participation is very much appreciated
- Irmgard Cecere
About the author
I've studied compilers at Paine College in Augusta and I am an expert in theoretical computer science. I usually feel sleepy. My previous job was ceiling tile installer I held this position for 5 years, I love talking about cartophily (card collecting) and sports. Huge fan of George Eliot I practice rugby union and collect sports memorabilia.
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