Supreme Court Makes it Easier to Trademark Website Names

As a general rule, generic names can’t be trademarked or copyrighted. This makes sense. If, for example, I were to name my company “Computers Inc.” I couldn’t copyright or trademark the word “computers,” thus preventing people from using it.

This restriction also limits lawsuits, allows for the media to have freedom to use needed terms, and reduces public confusion—can you imagine having to shop for a “central processing unit attached to a motherboard” instead of a computer because only one company can use the word “computer?”

Supreme Court Makes it Easier to Trademark

But that idea was challenged last year, in a recent United States Supreme Court ruling in June of 2020. The case involved a website called Booking.com. When the company sought to have its name trademarked, the U.S. Patent and Trademark denied them intellectual property protection on the basis that the name was too generic.

Booking.com challenged the ruling, and brought the case all the way to the United States Supreme Court.

The court acknowledged that on the one hand, “Booking” is a generic term, and the idea of restricting the world from using it seems ridiculous.

But Booking.com argued that adding the “dot com” on the end of their name changed things. The word “Booking,” the company argued, is generic and used by everyone everywhere. But there is only one “Booking.com.” In other words, restricting anyone from using “Booking.com” does not create the type of harm or restrictions that it would if the “.com” were not attached.

Take, for example, “Amazon.com.” This has a distinctly different meaning than just “Amazon.” The addition of .com, .org. .net or other identifying internet domains, makes an otherwise generic and non-trademark-able term protectable under intellectual property law, according to the Supreme Court.

Results and Consequences of the Case

The decision makes it easier to trademark your website or online presence. But it may also create problems. Under the ruling, the question is whether a name is unique, based on public opinion. A company with a generic term for a name may be able to attain protection just by growing its business. This in turn could shut out competitors, or make it easier for someone else to violate a trademark or copyright.

On the opposite side, the ruling shows that courts will be more liberal in granting trademark protection when it is challenged, or when an application is denied. This means that it is a good idea to make sure that your company names, or the names it does business under, are registered for trademarks and copyrights.

Because the case allows even the most generic online names to be trademarked, the last thing you want is your company name being trademarked by someone else just because they added a “.com” to it before you could.

Call the West Palm Beach copyright litigation lawyers at Pike & Lustig to help you if you have any intellectual property problems.

Resource:

oyez.org/cases/2019/19-46