MSC Intellectual Property & Technology Law | 3 min read
As digital platforms become a more popular way of doing business, many entrepreneurs are turning attention to how they differentiate their products or services on the internet. In a commercial context, a domain name is often used as a way of identifying and differentiating one business services from that of another on the internet. For example, there are currently over 60,000 .coms registered as trademarks globally (WIPO) and 500 registered in Canada.
A recent United States Supreme Court (U.S Supreme Court) case sheds light on what type of boundaries may preclude a domain name from being registered as a trademark. Particularly, how is genercity determined in the context of a domain name seeking registration as a trademark? In the United States Patent and Trademark Office et al v Booking.com, the U.S Supreme Court held that Booking.com is not a generic name, and is registrable as a trademark. In most jurisdictions across the globe, including in Canada, generic names are not trademark registrable, unless they have acquired secondary meaning in consumer markets, by attaining a level of distinctiveness among relevant consumers. A generic name identifies classes of goods or services, rather than a reference to a particular product or service. Examples of generic names include xerox, aspirin and ketchup. These names are generally used by the public to refer to copying/printing machines, a certain type of medication and certain types of tomato-based sauces.
Booking.com had applied to the United States Patent and Trademark Office (USPTO) to register its domain name as a trademark. The proposed mark was refused on the basis that the term is generic, as it identifies a class of businesses that provide travel related booking services on the internet, and was not distinguishing between particular businesses. To trademark the name, the USPTO opined, would give Booking.com undue control over a generic term that others should be free to use. Booking.com applied for a judicial review of the decision to the District Court, who found that the words “booking”and “.com” were not generic (reasons outlined below). An appeal of the decision by the USPTO to the Court of Appeal was unsuccessful. A further appeal the to the U.S Supreme Court was also dismissed.
Consumers’ perceptions make the difference
In affirming the decision of the two previous courts, the U.S Supreme Court held that consumers associated the name Booking.com with a particular entity, thereby distinguishing the name from other providers of similar or related services. The names take separately, were generic, but placed together conveyed a particular meaning about a travel-related website to consumers. To deny registration, the U.S Supreme Court further ruled, would be contrary to a bedrock principle of the Lanham Act (the legislative basis of federal trademark protection in the United States) which emphasizes the relevance of consumer perception in the validity of trademarks.
This ruling is particularly relevant to Canadian businesses with internet presence in the U.S, and if:
- You are thinking of registering a domain-name trademark in the United States;
- You do business on the internet;
- Your internet business has a U.S-based component, or,
- If your trademark is similar to an existing domain name.