by Francis G. Pennarola – Domain names are the lifeblood of internet-based or internet connected commerce. It is how the world finds you to beat that path to your door for the better mousetrap you built in your garage. It is not simply “if you build it, they will come” in cyberspace. You need a good address, a place where you can be found, a home you can protect from those who would look to profit from your good work.
Domain names, if they serve the functions of a trademark (a source indicator of particular goods and services) are entitled to trademark protection. We have obtained such trademarks for clients, looking to strengthen their brand identity. Those domain names, especially when protected by trademark registration, can be valuable assets. A client recently sold its business for a very substantial sum in large part because of its trademark protected domain name.
Can every domain name receive trademark registration? The answer, like many things in the law, is “It depends”. Potential trademarks fall in one of five classes: Generic, Descriptive, Suggestive, Fanciful or Arbitrary. For the most part, words that are either the name of the product, or describe the product will not be granted trademark registration. A word can be generic in one context and arbitrary in another. Take the word apple. An attempt to register it as a trademark for a fruit stand or orchard would not be permitted, as no one should be able to have a monopoly on the term for those uses. Apple as a trademark for a phone and computer maker is arbitrary. But for Apple’s dominance in the field, no one would associate the word “Apple” with a phone.
The position of the United States Patent and Trademark Office has long been that domain names that simply combine a generic or descriptive word with a top level domain are not eligible for registration. For example, Shoes.com would have been refused trademark registration for a chain of shoe stores. Since shoes have nothing to do with flowers, Shoes.com could probably get trademark protection for a flower shop (but why bother?). A recent U.S. Supreme Court decision, Patent & Trademark Office v. Booking.com, N.V. 140 S.CT. 2298 (June 30, 2020) held that the trademark “Booking.com” was entitled to federal trademark registration, even though it was a site for booking hotel and other registrations. This seemed to fly in the face of the anti-generic or descriptive trademark rule, which had been the law for decades. The Court did not throw out the rule, rather, it reviewed the records and was satisfied that because booking.com was perceived by a majority of consumers (approximately 75% of those sampled) to refer to the Booking.com website, it satisfied the law’s test of what a trademark is, a source indicator, and registration was ordered. Does this mean there is hope for Shoes.com as a registered trademark for a shoe store? Highly unlikely, but not impossible.
Your business’s domain name may be entitled to trademark protection. If secured, it can help you protect against competitors from diverting your prospective customers or damaging your reputation. For questions regarding domain name and other trademarks, feel free to contact me, Fran Pennarola, [email protected] 203-744-1929 ext. 22.