WASHINGTON – The United States Supreme Court ruled Tuesday that a company can obtain a federal trademark by adding the dotcom domain name to a common word if enough people think of the result as a distinctive mark, in a decision that enforces 74 – One-year law governing trademarks in the Internet age.
The ruling was a victory for hotel booking site Booking.com, which had been denied a federal mark.
The United States Patent and Trademark Office said the term was generic, quite the opposite of a trademark. The government rejected similar requests to grant protection to Hotels.com and Lawyers.com. But lower federal courts said that was wrong. They found that almost 75 percent of respondents in a survey viewed Booking.com as a distinctive brand.
By an 8-1 vote, the Supreme Court said it was distinctive enough. Judge Ruth Bader Ginsburg’s majority opinion said a term is generic only if consumers think it represents a broad class of services. But if they think it refers to something specific, it may be a registered trademark.
Booking.com had argued that many companies with generic names had been granted trademark protection, including The Container Store, Waffle House, and The Wig Company. The trademark office “even registered cooking.com, but the government now insists that Booking.com is a bridge too far. This doesn’t make sense.”
Dozens of other firms, including Cars.com, Homes.com and Debt.com, said the federal government’s approach is out of date.
The Electronic Frontier Foundation, a group that has long fought against government restrictions on the Internet, urged the court to rule against Booking.com.
Allowing trademark protection for such terms “would create new litigation risks for small businesses that cannot afford them.” He urged the judges to “protect the Internet’s ability to maintain unprecedented levels of communication, creativity and commerce.”