No one can trademark “Wine Inc.,” but now domains like wine.com can get trademarks.
The US Patent and Trademark Office erred by finding the term booking.com was too generic for trademark protection, the Supreme Court ruled on Tuesday.
Trademark law prohibits anyone from registering generic terms that describe a class of products or services. Anyone can start a store company called “The Wine Company,” but they can’t use trademark law to stop others from using the same name. When the online travel giant Bookings Holdings sought to trademark its booking.com domain name almost a decade ago, the US Patent and Trademark Office concluded that the same rule applied.
Booking Holdings challenged this decision in court. The company pointed to survey data showing that consumers associated the phrase “booking.com” with a specific website as opposed to a generic term for travel websites. Both the trial and appeals courts sided with booking.com, finding that booking.com was sufficiently distinctive to merit its own trademark—even if the generic word “booking” couldn’t be trademarked on its own.
Trademark law declines to protect generic terms in an effort to promote competition. If a company could trademark a word like “booking” or “wine,” it could interfere with competitors who want to accurately describe their products in the marketplace. That would give companies that trademark generic terms an unfair advantage.
But an opinion by Justice Ruth Bader Ginsburg (and joined by seven other justices) found that this wasn’t a serious concern for dot-com trademarks. A company like Travelocity or Expedia might describe itself as “a booking website,” but it would never describe itself as “a booking.com.” Ginsburg notes that the rules of the domain-name system ensure that only one company can use a name like booking.com, so consumers are likely to understand that “booking.com” refers to a particular website—it’s not a generic term for booking websites in general.
But in his lone dissent, Justice Stephen Breyer argued for turning this logic around: the domain-name system already guarantees exclusivity for the holder of a domain like booking.com. So why does a domain name need to be trademarked in the first place? After all, a company that doesn’t own the booking.com domain is unlikely to want to adopt that trademark, since it would just be funneling business to the domain owner.
And while it’s true that Travelocity wouldn’t describe itself as “a booking.com,” Breyer notes, it also wouldn’t describe itself as “a Booking Inc.” Yet trademark law prohibits anyone from trademarking such a generic company name.
Breyer argued that what’s really at stake in this case is the ability to register domains that are similar but not identical to booking.com. Thanks to today’s ruling, booking.com could “threaten trademark lawsuits against competitors using domains such as bookings.com, eBooking.com, booker.com, or bookit.com,” Breyer wrote. While Booking.com insisted that it wouldn’t do that, Breyer noted, other companies might not be so restrained.
Hence, Breyer warned, allowing the registration of generic domains like booking.com could enable companies to effectively monopolize the use of the generic term in conjunction with a dot-com domain name. In this sense, it raises the same issues as allowing trademarks for company names like “The Booking Company” or “Bookings Inc.” That is, it could allow one company to monopolize a term that describes an entire industry, not just one company.