Supreme Court Eases Trademark Rules for Online Companies -- Update
June 30 2020 - 12:49PM
Dow Jones News
By Brent Kendall
WASHINGTON -- The Supreme Court gave online companies broad
latitude to trademark their website names, rejecting restrictions
imposed by the federal government.
The court, in an 8-1 ruling Tuesday, sided with the online
travel firm Booking.com, which had applied to register four
trademarks using its name in connection with travel-related
services.
The U.S. Patent and Trademark Office had rejected the marks, on
the grounds that "booking" was a generic word that couldn't be
trademarked, and adding a .com on the end didn't change the
analysis.
Justice Ruth Bader Ginsburg, writing for the court, said the
government's approach was incorrect because the public understands
Booking.com to be a distinctive business, not a generic name for an
online travel service.
"Because 'Booking.com' is not a generic name to consumers, it is
not generic," she wrote.
The case gained widespread public attention because of the
unexpected role it played in Supreme Court history, thanks to the
coronavirus pandemic. It was the first case the justices considered
by teleconference -- and marked the first time the court ever
allowed a live public audio broadcast of its proceedings.
In its Tuesday decision, the court said its ruling didn't mean
that every generic .com name would automatically qualify for
trademark protections. Consumer perceptions are what matter,
Justice Ginsburg said.
The court rejected Patent and Trademark Office arguments that
allowing such trademarks would harm competition by deterring rivals
from using the word booking as part of their domain names. Other
legal doctrines would ensure that Booking.com can't claim a
monopoly on the word booking, the court said.
Justice Stephen Breyer dissented.
"Under the majority's reasoning, many businesses could obtain a
trademark by adding '.com' to the generic name of their product
(e.g., pizza.com, flowers.com, and so forth)," he wrote. "As the
internet grows larger, as more and more firms use it to sell their
products, the risk of anticompetitive consequences grows."
Booking Holdings Inc., the parent company of Booking.com, said
the decision was a victory for brand owners and "demonstrates that
the U.S. legal system has the capacity to evolve in order to
reflect the digital world we are all living in."
A Patent Office spokesman declined to comment.
An array of businesses filed amicus briefs supporting
Booking.com, including Cars.com, Dictionary.com, Salesforce.com and
Wine.com, warning that an adverse ruling would have threatened to
destabilize billions of dollars in brand investments.
Without trademark protections it would be more difficult to
battle counterfeit and fraudulent uses of their names, they said.
Cars.com, for example, cited an unaffiliated car dealership that
used its name prominently in its signage.
Write to Brent Kendall at brent.kendall@wsj.com
(END) Dow Jones Newswires
June 30, 2020 13:34 ET (17:34 GMT)
Copyright (c) 2020 Dow Jones & Company, Inc.
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