The Register reports…..
If you know anything about law it is probably that you can’t trademark a generic name. But this week the US Supreme Court heard a case that introduces a fascinating wrinkle in that longstanding rule, courtesy of the internet.
The case pitched the US Patent and Trademark Office (PTO) against online booking site Booking.com. You won’t be surprised to hear that the case is about the name “Booking.com”. The company (Booking Holdings Inc.) has been fighting for years against the PTO rules over generic names, insisting that it can trademark its full name.
What’s fascinating is that “.com” is itself somewhat generic – there are 145 million .com domains so no one would possibly allow “.com” to be trademarked. Likewise “booking” is also generic and so not trademarkable. But put the two together and you end up with something specific and, according to Booking.com, a phrase that it should be able to trademark and protect.
The Booking.com case is likely to become an interesting historical bookmark because it was the first case in which the US Supreme Court heard oral arguments live, thanks to the coronavirus.
The court has been unable to sit because of social distancing rules and so it decided – like everyone else in the world – to take things online. But the court maintains traditional (some would say horribly outdated) rules about its hearings: no cameras and no live audio. In important cases, the court has sometimes released recordings at the end of the day or end of the week.
But because of the fact that the court was going to make everybody, including the lawyers and the justices, call in, it was decided to also let the public listen in live. It is fitting then that the court heard an internet case which may upend decades of settled law while upending decades of Supreme Court proceedings by using the internet.
How’d it go, Grandma?
In case you’re interested, the hearing went pretty well and even included classic videoconferencing cock-ups, such as when Justice Sonia Sotomayor forgot to unmute her phone and Justice Stephen Breyer lost his connection and turned into a Dalek.
Supreme Court nerds were also held rapt by the fact that Justice Clarence Thomas actually asked a question – something he did once last year to much excitement and only one other time in the past decade.
Broadly, though, the whole experience was like when your grandma was finally persuaded to use Skype to talk to her grandkids and realized that it was actually pretty convenient and not at all scary once you’d figured out what the buttons do. The Supreme Court may have entered the 21st century. But back to Booking.com.
The PTO’s position, rooted in its no-generic-trademarks history, is that bookings.com is still generic and if it grants a trademark it would give the company license to attack similar names like “roombooking.com” or “hotelsbooking.com”.
Perhaps unexpectedly, the Electronic Frontier Foundation (EFF) – created to recognize how the internet has changed legal issues – agrees with this and has argued that getting a generic dot-com name already gives a company a significant commercial advantage and so it doesn’t really need the additional protections of a trademark.
A false claim about the trademarkable nature of a generic dot-com name was behind the most famous internet theft of all time: sex.com. Lifelong conman Stephen Cohen stole the valuable name by claiming he had a trademark on it then proceeded to harass the entire adult industry, grabbing dozens of dot-com names that included the word “sex” by threatening their owners with trademark infringement.
As things stand with Booking.com, the Appeals Court (Fourth Circuit) decided that yes, in fact, Booking.com could be registered as a trademark. The company noted that if it isn’t allowed to trademark its name then others can use it to promote their own services and send people to a totally different booking site, building on its reputation while at the same time risking damage to it if they provide a bad service.
Read full article at
https://www.theregister.co.uk/2020/05/06/booking_supreme_court/
