(Bill Hilton, a partner at my firm, co-authored this post with me.)
On June 30, 2020, the U.S. Supreme Court held that the addition of “.com” to a generic term has the potential to create a protectable trademark. In so ruling the Court rejected the United States Patent and Trademark Office’s “nearly per se rule” that when a generic term is combined with a generic top-level domain the resulting combination is generic. The background of this case is discussed in detail in an earlier post, Supreme Court Will Decide if “generic.com” Trademarks Are Entitled to Trademark Protection. A few days after this case was decided Kevin Kickstarter scheduled a meeting with his long-time attorney, Mr. Jaggers, to discuss how he might be able to profit from this decision. Regular readers of this blog may recall Kevin and Mr. Jaggers’ past appearances. Kevin has little regard for the attorney-client privilege, and once again he recorded his meeting with Mr. Jaggers and gave us permission to share it.
KEVIN KICKSTARTER: Hey, Mr. Jaggers. Good to see you! Are you ready to help me make a lot of money? Still hoping to sell my business to Google someday, ha ha!
JAGGERS: Good to see you Kevin. What’s up?
KEVIN: Well, I was reading Barstool Sports and I learned about this Bookings.com case the Supremes decided. Hey, dude, just kidding, I read about it in the Wall Street Journal, not Barstool! Seriously, Mr. Jaggers sir, the Supreme Court seems to be saying that you can take a generic word, add a “dot com” to it, and maybe get trademark rights in the domain name. Am I understanding that right? J
AGGERS: Yes, you are, but like most Supreme Court IP cases, there’s more to it than that …
KEVIN: So tell me about it!
JAGGERS: Well, the court agreed with the Trademark Office’s argument that “booking” for a hotel reservation service is generic. For example, someone might say, “what booking service are you going to use for your trip?” But they disagreed with the Trademark Office’s argument that “booking.com” is generic – as they note, no one would say “what booking.com are you going to use for your trip?” While “booking” may be generic, Booking.com is not a generic term to consumers. Consumers associate Booking.com with a specific website. Booking.com proved this when it commissioned an extensive consumer survey that established that — to use some trademark law lingo — Booking.com has “secondary meaning.” However, keep in mind that Booking.com only achieved secondary meaning by spending many millions of dollars marketing the name over many years.
KEVIN: That makes a lot of sense. Someone might say “what dating service are you using,” but not “what dating.com service are you using.” And everyone knows that Booking.com is a popular business.
JAGGERS: Exactly. Not to get too technical, but the court recognized that a “generic.com” term – booking.com or dating.com, for example – can convey to consumers an association with a particular website, something the Trademark Office was unwilling to do. Not to get too legalistic on you, but the way the court described it is that “whether any given ‘generic.com’ term is generic depends on whether consumers in fact perceive that term as the name of a class or, instead, as a term capable of distinguishing among members of the class.”
KEVIN: OK, I think I get it. So, I have a few ideas for some “generic.com” domain names. I think I can develop these as trademarks by investing in them, and get them to the point where consumers distinguish them as members of a class, rather than the name of a class. It may take a few years and some bucks, but if Booking.com could do it, I can do it. What do you think?
JAGGERS: Well, what you describe is certainly possible, but it will take a lot of time and money, and ….
KEVIN: …. Yeah, I get that. But I have a couple of ideas, and I have financial backers. I think I can pull this off. What’s the downside? Why not give it a try?
JAGGERS: The downside is that you’ll spend a lot of money, invest a lot of time, and be unable to pull off what Booking.com did. It’s really a low percentage shot without a huge budget and years of brand development. Also, smart competitors could poach on you and frustrate your strategy. For example, they could use domain names so similar to yours that you’ll never develop secondary meaning. In other words, they could purposefully create confusion before you acquire trademark rights that would allow you to stop them.
KEVIN: OK Mr. Jaggers, thanks. You’re a lawyer, and you’re naturally conservative – very conservative. Fortunes aren’t made without taking risks. Booking.com is a private company, but its value is soaring following the Supreme Court’s decision. So, I’m gonna give it a try. I’ll keep you in the loop, and hopefully a few years from now I’ll be able to tell you that I got the last laugh on this. Ciao, dude!