Just a bit of political commentary. Most people, including me, salivate over the high profile and politically charges cases, but this one is a case of pure law: judges looking at precedent and applying the facts.
Short version: A generic name is not eligible for trademark registration. So can booking.com register? Booking is generic. dot com is generic. Does the combination make it different?
Scotus rules 8-1 (Breyer) that the whole term “Booking.com” makes it different. This is one of the few cases I’m actually torn on, but damn if I don’t think Breyer has the best of it.
So if I sell swords, then I can trademark swords.com and anyone else in the sword business has to fear a lawsuit from me if they use “swords” in their domain name? It’s a generic term that the whole word should be able to use, no?
To follow up, precedent was cited from the late 1800s that said you cannot trademark a generic name just by appending “Inc” or “Company” to it. So “The Wine Company” or “Wine, Inc.” could not be trademarked, even if, and this was a point Breyer made, even if everyone associated “Wine, Inc.” with my company. No amount of public recognition can turn a generic term into a trademark, the idea being, that if you sell wine, you can use the generic term “wine” to describe your product without fear that I will use my “Wine, Inc.” trademark against you.
If I am “UltraVires Wine Inc.” then I can trademark it because my name is not generic and people can know the quality of my wine (good or bad) and know what they are getting. If you say your product is UltraVines (note spelling) Wine Inc. then you are infringing because you are using my non-generic term. But you can say “wine” all you want.
Why is that different just because of dot com? All that means is that you are a company with a website.
I’m not sure I agree. It’s the whole of “booking.com” that’s trademarked, not “booking” or “.com”; you’re suggesting that the confusion is only because of “booking,” which is not eligible for protection. “Apple Computers” and “Apple Music” all over again.
I’m saying the same thing you are: “Booking.com” is trademarkable.
Apple Computer is a perfect example of what I’m talking about. “Apple” is a generic term; “Apple Computer” can be trademarked. The .com identifies it as a website, much like “Apple Computer” identifies it as a computer company.
Apple Music is a different issue. When they started, the Beatles and Apple Corp. agreed that Apple Computer could use the name as long as Apple didn’t go into the music business. “Apple Music” broke that agreement.
Sure. And as Breyer said, you already get the benefit of having that specific domain name. But why should one company get a trademark for the generic term? You can’t trademark “booking” and all dot com does is say “hey I have a website” so why do the two things add up to a distinctive mark if neither is eligible for trademark? I understand it was an 8-1 and the majority made good points too. That’s why I like the case. I’ve changed my mind at least 4 times on this.
Disagree. “Apple” is a fanciful name. It doesn’t describe computers or music. The only way you know that Apple is a computer is because of the goodwill that the company earned through hard work. Booking is a generic term, and as I said, what does dot com add to that? Yes, customers know that “booking.com” is a specific recognizable company much like Apple Computers but the case law prior to this was pretty clear that for a generic term, it doesn’t matter if you have achieved recognition because you cannot shut out your competitors from describing their own company with the very terms of what they do.
If Booking Inc. or Booking Company is not eligible for trademark registration, then why Booking.com?
I missed this earlier. “Apple” is a generic term if you are selling the fruit. If I have an orchard and sell Granny Smith apples at my store or online or on the roadside, I certainly could not trademark “Apple, Inc.”
When you are talking about music or computers, it is not generic at all, it is fanciful. There is nothing about the word “Apple” which describes computers or music. The only reason you associate those is precisely because a company has taken a fanciful name, applied it to their computers or music, and built goodwill and marketing power such that you associate “Apple” with a particular type of computer. And for protection of both the company and the consumer, the law wants it to be that if you order an Apple Computer, then you know precisely what you are getting.
But the other side of that is that a business cannot shut out all of its competitors by registering a truly generic name that simply describes its products, say by trademarking “computer.” And, again, why should that be different if I register a domain name and append dot com at the end? The first person to register a domain name for a generic product gets an absolute monopoly on the term.