DEAR EXPERT
Flawed or Fabulous?
One-upping rivals by trademarking words commonly used in media may seem brilliant. But legal eagle RONNIE RAJU explains the pitfalls.
Dear Expert, The recent U.S. Supreme Court decision that changed trademark laws has me wondering if I can register a generic mark like FMradiostation.com. I thought marks that consist of a generic term plus a top-level domain, when used in connection with goods or services (such as mattress.com for stores that sell bedding) could not be protected and federally registered. Scheming in Schenectady, N.Y.
and the geographic scope of the survey. Conducting trademark surveys is an art in itself and requires expertise in formulating the appropriate questions and the process of targeting the right population of respondents. You can expect to pay upwards of $35,000 for an effective trademark survey. Booking.com was able to provide evidence that it started providing online Dear Schenectady, that a TLD such as .com, .biz, .org, etc., booking services to U.S. customers at least The short answer is that you have a chance could distinguish a source because the re- as early as 1996 and that it was ranked to obtain a federal registration for a generic sulting combination, generic + TLD, leads first in consumer satisfaction among interm plus a top-level domain (generic + TLD) consumers to a specific website, and URL dependent travel websites in a J.D. Power if you are using it as a trademark. However, addresses can be owned by only one entity survey. Perhaps the most powerful piece you will have to be able to provide plenty of at a time. of evidence was an extensive trademark evidence that consumers recognize survey in which 74.8% of relevant FMradiostation.com as a trademark. consumers considered booking.com Conducting trademark surveys is an In the case USPTO v. Booking.com, to be a service emanating from a sinart in itself and requires expertise in B.V., the Supreme Court upended gle company as opposed to a generic formulating the appropriate questions what was once a bright-line rule that service. a mark consisting of a combination If you want to be able to register and the process. of a generic term and a top-level doa generic term + TLD mark, make main like “.com” is automatically generic. The key is that a generic term + a TLD sure you are following the same rules that As background, you have to understand mark can be protected, but only if the owner you should apply to all of your trademarks: that generic terms cannot function as trade- can show that consumers associate the mark 1. Make sure the generic + TLD mark is marks and are not eligible for federal reg- with a particular source. In other words, the set off from the rest of the text by using a istration because granting a registration for owner has to show that the mark has ac- different font or unique stylization. a trademark means that competitors cannot quired distinctiveness. The type of evidence 2. Always use the generic + TLD as an use those terms. Terms that are necessary that may be submitted to support a claim of adjective, never as a noun or a verb. to accurately identify the type of goods or acquired distinctiveness includes consumer 3. Use a TM next to the generic + TLD services being provided cannot be registered, surveys, consumer declarations, advertising so consumers know you view it as a tradeas this would unfairly hamper competition. expenditures and evidence that shows the mark. For example, if a company was able to regis- duration, extent and nature of the appli- 4. Keep good records of advertising exter a generic mark such as “TV station” for cant’s use of the proposed mark, including penditures and estimates of how many consumers are exposed to the advertising broadcasting services, it could prevent oth- whether the use is exclusive. ers from using TV station when advertising Regarding consumer surveys in particular, and your social media campaigns. their own broadcasting services. the Supreme Court warned that they must 5. Consider having In the Booking.com case, the Supreme be properly designed and interpreted to en- a trademark survey Court ruled that booking.com is eligible sure that they are an accurate and reliable done to support any for trademark registration even though representation of consumer perception of application for trade“booking” is a generic term for online hotel a proposed mark. Therefore, an applicant mark registration of reservation services. The Court indicated submitting a survey must carefully frame the generic + TLD its questions and provide a report that docu- mark. Do you have a professional puzzle that ments how the survey was conducted. There MFM and BCCA experts might be able to should be information about how the survey answer? We’ll mine the contact base and find Ronnie Raju is a partner at Wilkinson Barker questions were developed; the number of con- Knauer, LLP. She can be reached at (202) 383-3370 the right person to answer your question. Just contact TFM editor Janet Stilson at or rraju@wbklaw.com. sumers contacted; the number of respondents TFMeditor@mediafinance.org.
6 The Financial Manager • January/February 2022
