WASHINGTON — The U.S. Supreme Court ruled Tuesday that a company can get a federal trademark by tacking on the dot-com domain name to a common word if enough enough people think of the result as a distinctive brand name, in a decision applying the 74-year-old law governing trademarks to the Internet age.
The ruling was a victory for the hotel reservation site Booking.com, which had been denied a federal trademark.
The U.S. Patent and Trademark office said term was generic, the very 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 nearly 75 percent of respondents in a survey considered Booking.com to be a distinctive brand name.
By an 8-1 vote, the Supreme Court said it was distinctive enough. Justice Ruth Bader Ginsburg’s majority opinion said a term is generic only if consumers think of it as representing a broad class of services. But it they think it refers to something specific, it can be trademarked.
Booking.com had argued that many companies with generic names have 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 Booking.com is a bridge too far. This is nonsense.”
Dozens of other firms, including Cars.com, Homes.com, and Debt.com, said the federal government’s approach is out of date.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 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 can ill-afford them.” It urged the justices to “protect the Internet’s ability to sustain unprecedented levels of communication, creativity, and commerce.”
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