Supremes go live on video
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 long-standing rule, courtesy of the internet.
The case pitched the US Patent and Trademark Office 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 and 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.
It’s worth noting that 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 But the court maintains traditional (some would say horribly outdated) rules about its hearings: no cameras and no live audio.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 in 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 given a company a significant commercial advantage and so it doesn’t really need to additional protections that a trademark would give it.
It’s also worth noting that a false claim about the trademarkable nature of a generic dotcom name was behind the most famous internet theft of all time: sex.com. A lifelong con-man Stephen Cohen stole the valuable name by claiming he had a trademark on it, and then proceeded to harass the entire adult industry, grabbing dozens of dotcom names that included the word “sex” in 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 notes that 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.
On the other hand, several other courts have ruled against the generic.com as a trademark argument, specifically in cases surrounding Advertising.com, Hotels.com and Mattress.com. The Trump Administration agrees and its lawyer argued to the Supreme Court that any other interpretation “threatens to cause serious and immediate anti-competitive harms.”
Dell files to trademark ‘Podference’ – presumably the mutant offspring of COVID-19 and a virtual conference?
The arguments presented to the court also had their own kind of logical circle. Even though “.com” is now associated with a website, the reason that “com” was added to the internet in the first place was that it was supposed to be the area of the internet that was carved out for “commercial” activity with “.org” designed for non-profits, “.edu” for educational establishments, “.gov” for government websites, “.mil” for the military and “.net” for network operators.
Simpler times. The fact that “.com” also worked as a shortened version of “company” helped make it become the backbone of internet addresses to this day.
But in the case that the Supreme Court was asked to take as precedent, it was the combination of a generic name with the generic name “company” that was at the center of it. Long story short, the Goodyear Rubber Co lost its trademark claim in 1888 that it wanted in order to shut down the Goodyear Indian Rubber Glove company.
Without wanting to get sucked too far into trademark law, that case was one spark for the famous Langham Act of 1946 which tried to sort out a whole range of trademark issues and still pretty much stands as the trademark law. That act decided that the key to deciding whether something should be trademarkable lies in its “primary significance.” In other words, the word “booking” clearly means to book something and doesn’t immediately mean “oh that company called Booking.”
That approach has pretty much dictated how everyone views trademarks in the US ever since so everyone is pretty anxious about flipping it upside down just because you stick a “.com” on the end.
Netflix.com and chill
The Booking.com lawyer countered the argument that the company would go on a booking rampage by responding that it has no interest in grabbing other domain names with the word “booking” in – it just wanted to be able to shut down people using the term “Booking.com” in counterfeiting and cyberpiracy (their term, not ours).
But, of course, while that may be the case for Booking.com, changing the law on this point could well open the floodgates to other .coms and they may not be so obliging – as was made clear by the sex.com lawsuits that succeeded even when they had no legal basis.
Justice Clarence Thomas’ rare question was actually pretty good – he pointed out that the PTO allows businesses to trademark generic terms within telephone numbers (the old 1-800-GENERIC) and so why not domain names? The PTO responded by basically saying that it was a much smaller issue because it always incorporates numbers.
The discussion moved onto street addresses – that can also be used in trademarks – usually addresses like “1 Park Lane” when they are restaurants or fancy shops. If street names, why not domain names? The PTO argument: that a street address really only conveys a physical address and nothing bigger.
And Justice Brett Kavanaugh asked if allowing Booking.com to register as a trademark would allow every .com name to register itself as one, and its lawyer basically said “don’t worry about it, the PTO is such a pain in the ass, most people won’t bother.”
Fundamentally, however, the argument came down to whether a specific .com name can be viewed as its own brand. The example “washingmachine.com” was given as an example for one that shouldn’t be.
The justices’ clearly implied that they were going to look for some kind of solution in the middle where you can distinguish between a purely generic term and something that has additional meaning thanks to its .com suffix. We’ll see what happens when they made their decision in the coming months. ®