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N EW HAM PSH I R E B USI N ESS R EVI EW
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N H B R.C O M
THE LAW
Does adding “.com” to a word make a trademark? U.S. Supreme Court to decide level of protection in Bookings.com case
— namely, PepsiCo. Trademark rights can be powerful and valuable components of a business’s intellectual property portfolio. On May 4, the U.S. Supreme Court presid- Unlike its intellectual property cousins, pated over its first-ever remote oral argument ents and copyrights, a trademark does not in theREGION matter of U.S. Patent and Trademark expire after a certain amount of time, but NASHUA Office v. Bookings.com. The case garnered remains effective so long as it is in actual considerable attention because the argu- use as a trademark, and theoretically can ments were made over telephone lines with last forever. each justice remotely questioning the witAlthough a business may enjoy certain nesses, and all on a live feed to the public. trademark rights without receiving a fedUncharted watersPERSONAL indeed for our country’s eral registration for a trademark, a federal RING, HOSPITALS, BANKING, FINANCE, ENERGY highest court. THE LATEST, ABOUT TOWN registration provides the strongest protec, FLOTSAM, LAW, OPINIONS, But theTOURISM, case also is significant it tion from competitors unfairly trading off ON, HEALTHCARE, NEWS, CHARITABLEbecause GIVING, MORE ONLINE addresses whether “.com” companies will the goodwill of their trademarks. A federal e, CALENDAR, LAST WORD be eligible to obtain federal trademark pro- registration also provides rights throughout tection for generic terms that historically all 50 states. have been ineligible for trademark protection. When considering whether a work or In the simplest sense, trademarks are logo is worthy of a federal trademark regiswords, phrases, symbols or designs used to tration and protection, potential marks are identify the source of products or services. described generally in one of four ways corFor instance, when a consumer purchases relating to the strength of the mark. a product with the “Pepsi” mark or logo, Generic marks are those used to describe that consumer knows and expects that common terms or categories of goods such product was produced by a singular source as cars, bikes, hats, etc. Because these are BY JEREMY T. WALKER
terms that everyone uses commonly, they are not afforded any trademark protection. Otherwise, businesses could register these generic terms as trademarks and prevent competitors from using those terms to sell like products. Descriptive marks use a word that describes the nature of goods or services and can be afforded trademark protection only if the owner establishes that the mark has acquired some distinctive, “secondary meaning” such that consumers identify the descriptive mark with a singular source. Examples of descriptive marks that have gained secondary meaning and function as trademarks are “digital” for computers and “sharp” for televisions. Suggestive marks do not describe particular goods or products, but instead just suggest some attribute of a good or product, and still require some thought on the part of consumers to connect the dots to the product or service. “Microsoft” is suggestive of software for microcomputers and “Greyhound” is suggestive of bus transportation services.
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Fanciful marks are the strongest types of trademarks because they have the sole purpose of functioning as a trademark and have no other meaning other than its use as a trademark. Classic examples of fanciful marks are “Exxon” or “Kodak.” The recent case before the Supreme Court originated in 2011 when an internet company applied for trademark protection of its name, Bookings.com. The U.S. Patent and Trademark Office rejected the application and denied federal trademark protection on the basis that the term “bookings” is a generic term for hotel reservations, and generic terms cannot serve as trademarks. The USPTO’s logic was that it would be unfair to afford the term “bookings” trademark status because it would prevent other competitors from using that common term to describe that they also perform hotel bookings. Upon appeals through the federal court system, the Court of Appeals for the Fourth Circuit disagreed with the USPTO and held that the combination of the generic term “bookings” with “.com” render the mark a descriptive mark, and therefore could be a federally protected trademark if it had acquired secondary meaning. The court further found that consumer survey evidence showed that the mark had acquired secondary meaning and consumers identified the mark with a single source. Now before the Supreme Court, an attorney for the U.S. Solicitor General argued, on behalf of the USPTO, that allowing companies to obtain trademark protection by combining generic words with “.com” would serve to unfairly restrict competition. Thus, argued the Solicitor General, terms such as car or wine cannot be afforded trademark protection nor should companies be able to obtain a trademark for “Car.com” or “Wine.Com.” Based on questioning by the Supreme Court justices, it is hard to predict which way the court will rule, but either way will be meaningful. If the court allows for generic words combined with “.com” to obtain federal trademark rights, will that mean a business named www.car.com be able to stop other auto businesses from using the term “car” in their domain names? Or if the Supreme Court rejects the trademark, will that mean that the currently registered trademarks Hotels.com or Restaurant.com will face challenges to their trademark protection? Stay tuned, the Supreme Court likely will rule early this summer. Jeremy Walker, a director in McLane Middleton’s litigation department, focuses his practice on business litigation, with a particular emphasis on intellectual property and construction litigation.
