WASHINGTON — In a ruling that will open the doors for further brand protection, the U.S. Supreme Court today struck down a broad federal rule that blocked trademark registration of generic terms used in domains.
U.S. justices, 6-1, decided that the addition of ".com" to an otherwise generic term could transform Booking.com into a protectable trademark, siding with the operators of the travel booking website in its eight-year legal journey to secure a trademark registration for its name.
In the Booking.com decision, the court said that consumers viewed the name as a distinctive marker of a particular company rather than a generic name for a type of service.
"Consumers do not in fact perceive the term 'Booking.com' that way," wrote Justice Ruth Bader Ginsburg for the majority. "That should resolve this case: Because 'Booking.com' is not a generic name to consumers, it is not generic."
The U.S. Patent and Trademark Office recently sought Supreme Court revew after a lower court decided the addition of ".com" could transform an otherwise generic term into something that consumers might recognize as a trademark.
The agency always had advocated for a "sweeping rule" that rationalized that a simple generic term adorned with a ".com" ending would remain unprotectable. Justices today quashed that bright line.
In a dissenting opinion, Justice Stephen Breyer said that by making such terms eligible for trademark protection, he feared that the justices decision would lead to a proliferation of generic “.com” marks, “granting their owners a monopoly over a zone of useful, easy-to-remember domains."
Adult industry attorney Lawrence Walters told AVN today that the ruling, in conjunction with two other U.S. Supreme Court decisions over so-called “scandalous” and “immoral” trademarks, represents a big win for adult companies seeking brand protection.
“This decision represents a substantial shift in trademark law which traditionally ignored the top-level domain extension when evaluating eligibility for trademark registration,” Walters said. “Now, companies can seek trademark protection for generic .com names so long as the brand has developed secondary meaning in the marketplace.
“In other words, if the public associates a generic ‘.com’ brand with a specific company’s goods or services, the brand can be registered as a trademark," he said.
“This decision, in combination with other recent rulings allowing registration of sexually explicit marks, creates significant opportunity for adult companies that have established distinctive brands using generic terms.”
