I know that you sometimes answer intellectual property questions that are not strictly about copyright, so here’s one for you…
I know that folks may register just about any available word as a domain name on the Internet, using one of the many Top Level Domains (TLDs) like .com, .org, or .biz. I also know that a service or product may be protected by registering a trademark in the United States Patent and Trademark Office (USPTO), but that ordinary words can’t be protected as trademarks, which have to be distinctive. I’ve also heard that there is an exception to this rule for terms that have “secondary meaning” – meaning that the relevant consumers have come to associate the ordinary word with the particular product or service over a long time (more than five years). So what’s this that I hear about just adding a TLD to an ordinary word and registering that as a trademark?
You’ve just stepped into a big, steaming pile of legal mess that may soon be a lot less messy (or not). Let the Doc take a swing at this…
Domains are registered under the rules of the Internet Corporation for Assigned Names and Numbers (ICANN.org) which authorizes “registrars” to operate domain name services that translate a domain name (the thing you type into your browser, like “LWH-law.com“) into the Internet Protocol Address that designates the server that contains the information you want to see. The full list of TLDs can be found here.
In general, as long as a domain is unique, and is registered in good faith, you may register it just by paying a fee to the registrar. Just because you have registered a domain, however, does not mean that you may use the federal courts to stop someone from using your domain name or something confusingly similar to it. In some cases, a similar domain name may be removed from the Internet by ICANN if they determine that it is registered just for “typo squatting”, where a common misspelling or mis-typing of the domain is used to mislead others. To prevail against a cybersquatter, the owner of the domain must have a registered trademark, must show that the squatter’s domain is identical or confusingly similar to the registered mark, and that the squatter has no legitimate interest in the term and is using it in bad faith. There is also a United States law that punishes squatters: Anticybersquatting Consumer Protection Act (ACPA), 15 U.S.C. § 1125(d), et seq.
“Ah”, but the Doc hears you say, “how can someone with a really valuable domain that just happens to be an ordinary word ever protect that, since it’s not possible to register a trademark for an ordinary word?” (The Doc awards you the Captain Obvious badge of honor!) That is exactly the question that will be considered soon by the United States Supreme Court as it considers the case of booking.com. You see, booking.com tried to register its domain name as a trademark. The USPTO refused, and they appealed that decision, saying that for a long time, they have advertised the domain name and that it has come to be uniquely associated with their business in the minds of consumers. Richmond, Virginia-based 4th U.S. Circuit Court of Appeals had sided with booking.com last February. The USPTO then appealed to the Supreme Court, stating that the 4th Circuit decision allowed booking.com, “to rely on survey evidence of brand identification to obtain federal trademark protection for a generic term, thus ‘freez[ing] out’ its competitors from using domain names that accurately categorize their services.” The USPTO also showed that federal courts have denied trademark protection for other .com names using a generic word, including Lawyers.com and Hotels.com. While all of that is true, the Doc should point out that survey evidence of brand identification is EXACTLY the evidence that courts have long required in order to protect words used as trademarks, both for general terms and for those that are accused of becoming generic!
For its part, Booking.com argued in its brief that under controlling precedent, decisions on whether a term is generic are factual in nature and are decided on a case-by-case basis, and that a majority of the judges in Richmond got it right.
How will this turn out? Who knows? If the Doc could predict the outcome of Supreme Court cases, he’d have long ago decamped for Las Vegas, where by now he’d own a couple of white tigers, or at least a well-behaved house cat and a Porsche. To keep informed about the case, you can check the SCOTUSBLOG page.
Have a legal conundrum? A quasi-Gordian knot that needs untying? The attorneys at LW&H are particularly adept at slicing through the issues to resolve them in a timely and efficient manner. Give them, a call.
Until next month,
–Lawrence A. Husick, Esq.