Generic Marks Can be Trademarked If There’s a URL Suffix

A trademark is a mark—a logo, slogan, or saying, for example—which distinguishes a product or brand from the rest of the marketplace. Trademarks are all around us. They can be in the design of McDonald’s packaging or the arrow in Target’s logo or the phrase “America Runs on Dunkin.”

In each case, you not only know or have heard of the phrase or design, but you can look at or hear them and know which brand of company they represent.

Uniqueness Required

Because of that, trademarks have to be unique. They cannot be generic. That means that while you can trademark “Publix,” or “Where Shopping is a Pleasure,” you could not simply trademark “groceries” or “shopping”; these phrases are just too generic, and do nothing to distinguish any one brand, company or product from the rest of the market. Because these marks are so generic, they can’t be associated with any one company or brand.

Marks can move up in their unique characteristics to be descriptive, suggestive, arbitrary or fanciful, each of which gets a higher level of protection (and is easier to get trademark protection) than the category below it.

Generic Terms in URLs

But what about common, otherwise generic phrases used in URLs? Can a mark that normally would be too generic to be trademarked, get trademark protection if the mark has a .com, .net or other domain suffix attached to it?

In 2020, the Supreme Court addressed just this issue, in a case that involved the online company Booking.com. Booking, of course, is just a common verb, and is common and generic and used everyday in the English language. But Booking.com argued that it had acquired its own brand, and a uniqueness in the public eye, when the “.com” was added.

The Supreme Court agreed, and said that while a term like “booking” would ordinarily be too vague and general to be trademarked, the company could trademark the phrase because when the “.com” was added, the mark had a unique character. The court said that consumers who see booking.com, don’t think it’s a class of services or goods, they understand that the mark represents a specific company, as opposed to other competitors in the market.

Showing Pubic Recognition

The Court did say that to get trademark protection for an otherwise generic mark just because it has a suffix, the owner seeking to register the trademark must show that the trademark (in this case the full URL) has acquired a meaning in the public mind, and that the public understands the relationship between the trademark, and the company. This may necessitate putting forth evidence to the Trademark office to justify trademarking generic terms that are used in URLs. Evidence may include things like customer research, marketing efforts, or media attention, that highlights the uniqueness of a company’s URL.

Don’t make intellectual property mistakes that could harm your business. Call the West Palm Beach business litigation lawyers at Pike & Lustig today for help with your intellectual property needs.

Sources:

oyez.org/cases/2019/19-46

supremecourt.gov/opinions/19pdf/19-46_8n59.pdf