Supreme Court Eases Trademark Rules for Websites -- WSJ

By Brent Kendall 

This article is being republished as part of our daily reproduction of WSJ.com articles that also appeared in the U.S. print edition of The Wall Street Journal (July 1, 2020).

WASHINGTON -- The Supreme Court gave online companies broad latitude to trademark their website names, rejecting restrictions imposed by the federal government.

The court, in an 8-1 ruling Tuesday, sided with the online travel firm Booking.com, which had applied to register four trademarks using its name in connection with travel-related services.

The U.S. Patent and Trademark Office had rejected the marks, on the grounds that "booking" was a generic word that couldn't be trademarked, and adding a .com on the end didn't change the analysis.

Justice Ruth Bader Ginsburg, writing for the court, said the government's approach was incorrect because the public understands Booking.com to be a distinctive business, not a generic name for an online travel service.

"Because 'Booking.com' is not a generic name to consumers, it is not generic," she wrote.

The case gained widespread public attention because of the unexpected role it played in Supreme Court history, thanks to the coronavirus pandemic. It was the first case the justices considered by teleconference -- and marked the first time the court ever allowed a live public audio broadcast of its proceedings.

In its Tuesday decision, the court said its ruling didn't mean that every generic .com name would automatically qualify for trademark protections. Consumer perceptions are what matter, Justice Ginsburg said.

The court rejected Patent and Trademark Office arguments that allowing such trademarks would harm competition by deterring rivals from using the word booking as part of their domain names. Other legal doctrines would ensure that Booking.com can't claim a monopoly on the word booking, the court said.

Justice Stephen Breyer dissented.

"Under the majority's reasoning, many businesses could obtain a trademark by adding '.com' to the generic name of their product (e.g., pizza.com, flowers.com, and so forth)," he wrote. "As the internet grows larger, as more and more firms use it to sell their products, the risk of anticompetitive consequences grows."

Booking Holdings Inc., the parent company of Booking.com, said the decision was a victory for brand owners and "demonstrates that the U.S. legal system has the capacity to evolve in order to reflect the digital world we are all living in."

A Patent Office spokesman declined to comment.

An array of businesses filed amicus briefs supporting Booking.com, including Cars.com, Dictionary.com, Salesforce.com and Wine.com, warning that an adverse ruling would have threatened to destabilize billions of dollars in brand investments.

Without trademark protections it would be more difficult to battle counterfeit and fraudulent uses of their names, they said. Cars.com, for example, cited an unaffiliated car dealership that used its name prominently in its signage.

Write to Brent Kendall at [e-mail]

(END) Dow Jones Newswires

July 01, 2020 02:47 ET (06:47 GMT)

Copyright (c) 2020 Dow Jones & Company, Inc.