Unless you’re a corporation with a new product or a patent attorney, you probably don’t think about trademarks. Most of us see them every day on the internet, in stores or even in our homes — they’re simply part of business in the U.S. As it turns out, trademarks are rather curious beasts, particularly when it comes to websites and URLs.
I learned a lot about the intricacies of website URL trademarking from one of MFM’s contributing legal eagles, Ronnie Raju, a partner at Wilkinson Barker Knauer in Washington. In her “Dear Expert” column from the January/February issue of The Financial Manager, the publication for MFM members, Raju explains how a U.S. Supreme Court decision of June 2020 may have significantly changed the game for media companies thinking of trademarking their domain names in an effort to gain an advantage over competitors.
I also did some digging on my own, and discovered the decision may have some further-reaching implications. Booking.com, the online travel company that’s doing so well it took out its first-ever Super Bowl ad this year, was at the center of the Supreme Court’s 8-1 decision.
But let’s start with the premise behind Raju’s column: the question posed to her as our expert comes from a fictional radio station asking whether the change in laws might allow the owner to trademark the term “FMradiostation.com.” This action equates to trademarking the combination of a generic term (in this case “FMradiostation”) with a top-level domain (“.com”) to make it a unique URL. While on the surface it seems like this request wouldn’t stand a chance, the Supreme Court said otherwise.
In its simplest terms, the Supreme Court ruling stated that generic names can be registered by a business in the form of a URL if that URL is recognizable to consumers as being associated with a certain company. But, Raju warns, the burden of proof will lie with the company attempting to trademark the name.
For context, Raju explains that in general, generic terms aren’t typically allowed to be trademarked and not eligible for federal registration since receiving a trademark makes that generic name unavailable to competitors. She uses the example of a company looking to trademark the generic name of “TV station” for broadcasting services, since other TV broadcasters wouldn’t be allowed to use that name when describing or promoting their own services.
The Booking.com case upended that premise. When Booking.com first applied for a trademark in 2012, the Patent and Trademark Office (PTO) refused to register Booking.com, taking the position that the term “booking” is generic for online hotel reservation services, and merely adding the top-level domain “.com” would not take the mark outside generic territory.
The Supreme Court was faced with deciding whether a generic term combined with a “.com” domain name would result in a generic combined term because consumers associate the name with a specific business. Along with evidence submitted at an earlier state-level appeal, including a survey indicating that 74.8% of consumers recognized “Booking.com” as a brand rather than a generic service, Booking.com successfully argued that since it has been in business (with the same URL) since 1996 and ranked first in consumer satisfaction among travel sites by J.D. Power, it had established the generic name of “booking” as one that has meaning to consumers.
“Because ‘Booking.com’ is not a generic name to consumers, it is not generic,” wrote then-Justice Ruth Bader Ginsburg. The Supreme Court noted that the PTO’s own past practice didn’t adhere to its own rules, pointing to the registration of Art.com on the principal register for online retail store services offering art prints, and the registration of Dating.com on the supplemental register for dating services.
If you’re a media business thinking of following in Booking.com’s steps, Raju has some well-measured advice — and much of it revolves around conducting a trademark survey. The goal of a trademark survey is to provide evidence that the URL you’re considering trademarking has acquired distinctiveness — in the form of consumer surveys, consumer declarations, advertising expenditures and “evidence that shows the duration, extent and nature of the applicant’s use of the proposed mark, including whether the use is exclusive,” she explains.
Raju warns that trademark surveys can be an expensive proposition, often costing upward of $35,000, with some experts questioning whether they’re necessary or even often considered by the decision-makers. Consumer trademark surveys, submitted as a component of the overall trademark survey, can be an even stickier wicket, and need to be created and executed in a way that demonstrates they’re a reliable representation of how consumers perceive your proposed trademark.
If you choose to move forward with a trademark survey, Raju offers some very tactical advice that she says mirrors all trademark application rules, and I’ve taken the liberty of providing these directly from her column:
- Make sure the generic + TLD mark is set off from the rest of the text by using a different font or unique stylization.
- Always use the generic + TLD as an adjective, never as a noun or a verb.
- Use a TM next to the generic + TLD so consumers know you view it as a trademark.
- Keep good records of advertising expenditures and estimates of how many consumers are exposed to the advertising and your social media campaigns.
- Consider having a trademark survey done to support any application for trademark registration of the generic + TLD mark.
Some questions arise for me as I think about the implications of the Supreme Court’s Booking.com decision. I think the decision says that the Supreme Court certainly understands many websites have a particular brand that’s meaningful to consumers, and that the internet, combined with advertising, will continue to exude an ever-higher level of influence on consumers.
But how will the PTO handle current and future trademark applications? Will it scrutinize potential conflicts among existing domain names? And does this law change ultimately make securing domain name trademarks easier or more challenging?
Speaking of tough questions, myriad issues and questions media finance professionals face in their jobs are the cornerstone of MFM’s upcoming annual Media Finance Focus conference, taking place in person for the first time since 2019 from May 23-25 in Tampa, Fla. This year’s theme of “Blue Skies Ahead” signals scores of informative sessions, distinguished keynote speakers, interactive industry roundtables, networking events, and an exhibit hall showcasing the latest industry products and services. I’m excited to meet and interact with those who make the wheels of media finance turn.
Joe Annotti is president and CEO of the Media Financial Management Association and its BCCA subsidiary, the media industry’s credit association. He can be reached at [email protected] and via the association’s LinkedIn, Facebook, Instagram and Twitter accounts.
