Dot-com Trademarks: Open for Booking?

The U.S. Supreme Court’s decision raised issues that remain hot topics across the world, reports Maura O’Malley.

On June 30, 2020, the U.S. Supreme Court ruled in a landmark decision in United States Patent and Trademark Office v. B.V. that the travel aggregator site should be allowed to obtain trademark protection for its name BOOKING.COM. The court found in an 8-1 verdict that the addition of dot-com to a generic term was not necessarily generic and could be allowed trademark protection.

The U.S. Patent and Trademark Office (USPTO) had opposed’s trademark application, suggesting the site could potentially “seek remedies outside trademark law” to protect its name.

However, the since-deceased U.S. Supreme Court Justice Ruth Bader Ginsburg wrote in the majority opinion that there is “no basis to deny the same benefits Congress accorded other marks qualifying as non-generic.”

At the time, there were concerns that the decision to allow generic dot-com trademarks would result in the Principal Register being flooded with weak trademarks, as well as overenforcement, encouragement of trademark bullying tactics, and a chilling effect of inhibiting rather than promoting fair competition in the U.S. and globally.

As the two-year anniversary of the decision nears, trademark lawyers in all jurisdictions are still chewing over its implications and how they compare with their own domestic perspectives.

High Burden Holds Back the Tide

Rebecca Tushnet, Frank Stanton Professor of First Amendment Law, Harvard Law School (US), said it is probably “too early to tell” if the case has prompted a rush to register domains.

“One other question, which still hasn’t seen much attention, is whether the doctrine of ‘de facto secondary meaning’ survives, allowing unfair competition protection for producers who have successfully associated themselves with a generic term but not allowing those producers to bar all use of that term by competitor,” said Ms.Tushnet. “It’s not a common question, so we may have to wait a bit longer,” she added.

Discussing whether the verdict had changed people’s filing behavior, Katherine P. Califa, partner at Foley & Lardner LLP (US), who was part of the team representing, said while there has not been a deluge of filings, there have been more than previously.

These applications have been filed recently, so, Ms. Califa added, “Who knows if they are going to be able to overcome the descriptiveness refusals?”

The USPTO “still says that the burden is high, to prove that these descriptive dot-com terms are eligible for registration on the Principal Register, and that typically five years of use alone would not be enough,” she explained. “You would have to show evidence of acquired distinctiveness.”

In addition, Ms. Califa observed: “It will make it easier to register some of these dot-com names on the Supplemental Register, at least as a starting point. The marks can then move onto the Principal Register once there is significant evidence of acquired distinctiveness.”

“One other question, which still hasn’t seen much attention, is whether the doctrine of ‘de facto secondary meaning’ survives.”
Rebecca Tushnet, Harvard Law School (US)

Global Perspectives

Candice Kwok, partner at Marks & Clerk Singapore LLP (Singapore), said she did not think the case had made an impact there. In fact, Singapore’s intellectual property (IP) regime has been moving in the opposite direction.

“A mark like would be almost impossible to secure as a trademark in Singapore. Unless, of course, you could show acquired distinctiveness through extensive use,” said Ms. Kwok.

The U.S. has always been more permissive, relative to Singapore, about what may be registered as a trademark, she explained. “The Singapore Registry considers itself independent and not bound by the decisions of other jurisdictions, in its consideration of what constitutes a distinctive trademark, and rightly so.

“In the past few years, it has been increasingly strict with what it considers to be distinctive, meaning that many marks that may have passed muster previously are rejected for being descriptive or non-distinctive,” said Ms. Kwok.

This has been difficult for practitioners to explain to clients, particularly those who are denied registrations similar to ones that their competitors secured a decade or more earlier, she said.

“The Registry’s threshold for distinctiveness has been raised to the point where it is now clear that such marks will be rejected,” she added.

Max Ng, managing director at Gateway Law Corporation (Singapore), said Singapore has not had an equivalent decision at its apex courts, but it if it did, it “would be interesting” to see how it would pan out.

There is perhaps one aspect of that might be replicated, he pondered.

“The U.S. Supreme Court stressed that ultimately, whether a term will be construed as generic is contingent on how consumers perceive that term, that is whether that term can act to distinguish the source of goods from that of others. In this respect, Singapore’s courts would adopt a similar approach, in my view,” Mr. Ng said.

In Argentina, the ruling reinforced a trend that lawyers have been seeing since the early 2000s: the increase in domain name registrations as trademarks, said Gabriela Szlak, partner at Lerman & Szlak (Argentina).

Since the ruling, the country’s IP office, the National Institute of Industrial Property, has received over 870 applications for “.com” trademarks, and overall, there are more than 5,000 registrations in force with “.com” or “” terms, reported Ms. Szlak.

“Many of these applications include generic terms and have been granted and registered with no office actions from the Trademark Office. This shows that our Trademark Office generally allows for “.com” registrations, even when the mark includes generic terms,” she added.

Providing a South African perspective, Mariëtte Du Plessis, partner at Adams & Adams LLP (South Africa), said: “It would be fair to say that while the decision has had an impact on the filing and prosecution of dot-com incorporating trademarks, I have not noticed any significant increase in the number of clients seeking to register a dot-com incorporating trademark in South Africa, as a result of this decision.”

However, she added that she has seen that the registration of dot-com and [the country code top-level domain name for South Africa]-incorporating trademarks, including descriptive or generic words, can bolster a client’s claim in instances of online trademark infringement.

“I have not noticed any significant increase in the number of clients seeking to register a dot-com incorporating trademark.”
Mariëtte Du Plessis, Adams & Adams LLP (South Africa)

Elsewhere in Latin America, Leticia Natividad, managing partner at BIP LEGAL (Mexico), said that domains are not eligible for registration in Mexico because they are simply a combination of two generic names, which are not permissible.

However, if an applicant argues and evidences that consumers perceive such terms as capable of distinguishing the products or services from others, then the protection is granted.

“In fact, this was the criteria to register the mark in Mexico in 2019,” explained Ms. Natividad. “The Mexican Trademark Office [the Instituto Mexicano de la Propiedad Industrial] objected to the application, but the applicant successfully argued acquired distinctiveness [secondary meaning] derived through the use of the mark in Mexico for many years, among other arguments related to distinctiveness, resulting on the protection being granted.”

Alignment with Europe

Ms. Califa said that one of the first things the USPTO did following the decision was to issue new internal examination guidelines for the review of generic dot-com terms. “The emphasis in these new examination guidelines is that there’s no per se rule that these generic dot-com terms are either descriptive or generic,” she said.

Emmy Hunt, partner at Potter Clarkson LLP (UK), said that decision brings the U.S. in line with longstanding EU and UK practice.

She noted: “We would view their decision as being very sensible—and that has been our practice for as long as we can remember.”

Guidance in the EU and UK stemmed from what became known as the “” case, C-70/13, in which Getty Images (US) appealed the refusal of the Office for Harmonization in the Internal Market (now the EU Intellectual Property Office) to register on the EU Register.

The case considered if a mark composed of the descriptive word “photos” and the generic top-level domain (TLD) “.com” could be registered and whether the evidence was sufficient to find a domain name had acquired distinctive character through use.

The case reached the Court of Justice of the European Union (CJEU) in 2013. The CJEU upheld an EU General Court decision rejecting a Community Trade Mark for PHOTOS.COM on the basis that the mark lacked distinctive character.

“The outcome wasn’t the interesting bit. The interesting bit was the discussion of what the considerations should be,” Ms. Hunt pointed out.

“It affirms what we all thought to be the case, that the registry does not impose a blanket ban on certain types of marks, but where marks such as this aren’t inherently distinctive, they must show acquired distinctiveness. That particular decision took us to where the Supreme Court has taken the United States.”

Post-Brexit, Ms. Hunt does not see the UK deviating much from this EU precedent. “I think it’s actually quite a sensible line of case law, and we wouldn’t want to deviate from it,” she suggested. “So, I think we consider it to be settled case law.”

Ms. Du Plessis said: “Given the history of South African trademark law, our courts generally follow UK and European case law, and the basic concept regarding the requirement for distinctiveness, as applicable in the U.S., remains similar.

“It is expected that marks incorporating a descriptive/generic term and dot-com or other domain extensions will be accepted by the registry, subject to appropriate disclaimers, in line with the status quo.”

“Rulings like pave the way for incorporating new empirical evidence in cases where the generic or descriptive terms of the mark may pose challenges to registration.”
Gabriela Szlak, Lerman & Szlak (Argentina)

Consumer Surveys

When the decision came out, trademark owners hailed it as a welcome acknowledgement of the importance of consumer perception in determining whether something was generic or a potential trademark. relied heavily on consumer survey evidence in the case, which showed that 74.8 percent of relevant consumers considered “” to be a brand rather than a generic service. Would this lead to an uptick in using consumer surveys?

Jonathan E. Moskin, partner at Foley & Lardner LLP (US), who also was part of the team that represented, said that from his own experience, it was uncommon for applicants to conduct surveys at the level of the initial examination process. “But they can be a valuable tool,” he said. There are still questions regarding the requirements for an acceptable survey at the U.S. Trademark Trial and Appeal Board, he noted. There is also the cost to consider, which can range between US $20,000 and US $50,000.

“So it’s going to be a self-selecting group of already successful businesses that might even entertain the possibility of doing a survey,” Mr. Moskin suggested.

In the EU and UK, the registries are wary of surveys in these types of cases, Ms. Hunt said. In addition, she said, the cost is “horrendous,” and “there’s every risk that as a brand owner’s counsel, you will give them a survey, and the presiding judges will not be prepared to look at it.”

Discussing public perception, Ms. Hunt said that the public has recognized the level of investment of a business such as and that “isn’t just any old hotel booking business; it is this particular entity.”

Even if a brand owner can show public recognition of its brand, this evidence is not enough: it also needs to show that the brand indicates the origin of the goods or services.

“Survey evidence can help with this but is often refused or subject to strict requirements by registries and courts,” said Ms. Hunt. Witness evidence rather than consumer surveys is of more potential use in the UK, she continued. For example, Internet search results or something that shows that people were looking for rather than online hotel bookings, indicates that people are searching specifically for the business name rather than searching for a topic.

“That type of evidence more strongly shows the recognition of the business as a source of origin,” Ms. Hunt said.

Ms. Szlak said that from an Argentinian perspective, the ruling was interesting because it holds that consumer perception is key for legal interpretation and application--”a vision that we as IP practitioners share and encourage.”

“While Argentine law and courts as a principle hold that the consumer’s impression is crucial, it is still uncommon to find brand surveys or empirical evidence supporting consumer views.

“Rulings like pave the way for incorporating new empirical evidence in cases where the ge-neric or descriptive terms of the mark may pose challenges to registration,” she added.

Video courtesy of Envato Elements / by your_photo

Wednesday, May 4, 2022

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