“Your brand is the single most important investment you can make in your business.”
–Steve Forbes, Editor in Chief, Forbes
Remember the 90s? Sure you do: The fall of the USSR; the Oklahoma City bombing; the Monica Lewinsky scandal; and the rise of the Internet. Although use of the Internet for commercial advertising was initially banned, by the mid-90’s Netscape had developed Secure Socket Layers (SSL)—a security protocol that protected sensitive information transmitted over the web—and by the end of the decade, Internet business was booming. Websites and digital advertising all became part of business branding strategy.
Branding helps consumers identify a business and the services and products it offers. It includes trademarks—such as names, logos, slogans, and trade dress—used to reflect how the business and consumers perceive the company and often serve a key role in setting a business apart from its competitors. In addition, trademarks provide legal protection for a brand, shielding against infringement, misappropriation, counterfeiting, and fraud.
While trademarks typically include the names and logos associated with a business’s services and products, a website domain name itself may warrant protection. When businesses began establishing a presence on the web, some businesses in the hospitality industry sought protection against infringement by registering their domain names with the United States Patent and Trademark Office (USPTO). Radisson Hotels, for example, initially filed a trademark registration application in 1996 for the trademark “RADISSON.COM.” The registration was approved in 1997 and has been maintained to this day according to USPTO records.
Protecting a domain name through trademark registration, however, may prove difficult. To register a domain name with the USPTO, it must function as a trademark: It must be used in commerce as a source identifier and not simply as a domain name that informs or points consumers to the business’s Internet address. If a company’s domain name is incorporated as an element of the company’s logo and/or is prominently displayed on its website or other marketing materials showing a clear connection to the goods or services offered, it might be functioning as a trademark.
Last summer in United States Patent and Trademark Office, et al. v. Booking.Com B.V.(1) (the “Booking.com Case”) the Supreme Court held that the domain name “BOOKING.COM” could be trademarked (registered with the USPTO), potentially expanding the universe of approved trademarks to those that may appear as descriptive or generic. Generally, when a trademark is simply descriptive of the goods or services provided under the mark, it can’t be registered with the USPTO unless the owner can show that the mark has acquired a secondary meaning recognized by consumers as a source for the goods or services. Generic marks that only refer to general terms usually can’t be registered at all. The USPTO refused the trademark registration application for “BOOKING.COM” after concluding the mark is a generic name for online hotel reservation services. In the Booking.com Case, however, the late Honorable Justice Ginsburg held that although the term “booking” standing alone is generic, “Booking.com” is not and should be allowed to register. Any “term styled ‘generic.com’ is a generic name for a class of goods or services only if the term has that meaning to consumers.”(2) The key is whether consumers perceive the domain name as the source of a specific business or as a generic term. “Booking.com” was easily shown to be recognized by consumers as sourced to a specific entity and not generic.
Registering trademarks with the USPTO is essential for brand protection. A federally registered trademark comes with the legal presumption of validity. Should you need to bring or defend an infringement action, a registration certificate proves ownership in federal court, eliminating the need for profuse amounts of evidence. Disputes over domain names are common. If a third party uses a confusingly similar domain name that threatens your business, a trademark registration proves ownership without the need for further evidence in a UDRP proceeding, which is a relatively inexpensive arbitration proceeding that all website owners may use to resolve trademark infringement disputes over registered domain names. In the information age, trademark registration may be the single most important step a business can take to protect its single most important investment. •
- United States PTO v. Booking.com B.V., 140 S. Ct. 2298, 2020 U.S. LEXIS 3517 (June 30, 2020).
- Id., 140 S. Ct. at 2301.