Before this ruling, businesses could not register generic brand names—e.g. a condiment company could not trademark "ketchup".
Supreme Court decision in Patent and Trademark Office vs Booking.com makes it possible for businesses to trademark generic website names.
What does this mean for you?
Today, I'm going to answer six pivotal questions to help you choose a trademarkable brand name.
1) How does the Trademark Office decide which brand names you can and can't trademark?
The more descriptive and generic a brand name is, the more likely it is to be rejected at the Patent and Trademark Office. The more fanciful and arbitrary a brand name is, the more likely it is to be accepted.
The trademark spectrum:
- Generic—weak, not trademarkable (e.g. Bookstore)
- Descriptive—unlikely but possible (e.g. KitchenAid)
- Suggestive—more likely (e.g. Ray-Ban sunglasses)
- Fanciful—strong, easily trademarkable (Kodak cameras)
Why can't you trademark a generic brand name?
Other companies need to be able to use terms like “Bookstore” to describe their business. Trademarks are exclusive. If one company were able to trademark "Bookstore" then no other business in the same product category could call themselves a bookstore. That wouldn't make sense, would it? 📚
Why is a more arbitrary brand name better?
The company name "Barnes & Noble" does not describe or even suggest that the company sells books. The B&N name is only synonymous with books because the brand has established a reputation. No other store in the book trade needs to use the term “Barnes & Noble” in order to describe their business. Therefore, it is trademarkable.
Companies' names like Apple, Kodak, and Barnes & Noble don’t encroach on service or product terms.
Apple couldn't have named itself "computer company". That would not be trademarkable. But computers don’t run on apples, so the software company is free to name themselves after a fruit. The name "Apple" is entirely arbitrary when applied to a software company. 🍎
However, a fruit company couldn't name itself "Apple" because it would be too descriptive of the product they sell. The name "Apple" would not be arbitrary when applied to an apple vendor.
Pro-tip! If a term is suggestive of the brand experience but doesn’t necessarily draw a type of product to mind, then the term can be both trademarkable and a valuable part of a brand experience.
For example, Yeti is a tumbler and outdoor equipment company. The image of a Yeti is suggestive of their brand experience because "Yeti" implies the wild. Their products are used in the wild.
But what about Booking.com? "Booking" is a generic term that describes their service...
2) How does this Supreme Court decision change trademarking?
You could already trademark an arbitrary website domain name. Want to trademark the arbitrarily named brontopak.com? You can do that.
Here's what the Supreme Court decision changes:
More descriptive and generic brand names can get trademarked as long as there’s a dot com at the end.
A condiment company can now trademark ketchup.com. 🍅
HOWEVER—the Supreme Court placed a ton of weight for this decision on Booking.com's size and reputation. In the opinion, the justices imply that a company must have brand recognition before they can trademark a generic website name.
Not many companies will be able to replicate this model. Build a reputation before getting the trademark?! But this is not practical—especially for small businesses and third-party online sellers.
Amazon FBA sellers need to first apply for a trademark in order to then qualify for the Brand Registry program (which comes with special privileges).
Trademarks don't just protect a brand name once a business is big. Trademarking early can help online sellers grow a business.
But if you're an online seller that has their own website...
3) Do you need to protect your website name with a trademark?
If you already own a website domain that describes your company, then no one else can feasibly trademark it. No need to protect it via trademark.
There's no need to trademark your website domain in addition to the brand name. It is far more important to register a website domain that describes your business than it is to trademark that domain.
But if your brand name is the same as your website domain, then yes, trademark your website domain.
That is unless your website domain describes someone else...
4) What website domains can you trademark?
I must caution you against naming your website after existing brands.
Mighty LLC used to own "morganfreeman.com" and used the domain to divert web traffic to their commercial search engine. When Morgan Freeman found out, he applied for the trademark "morganfreeman.com" even though it was already in use. According to Legal Zoom, "arbitrators for the World Intellectual Property Organization (WIPO), the intellectual property arm of the United Nations, agreed with Freeman and determined that Freeman's illustrious career made his name sufficiently recognizable."
In 2005, Mighty LLC lost the rights to "morganfreeman.com" because the website described a completely unrelated and well-known entity.
Lesson: don't try to buy and profit off of a domain that does not describe your business.
5) What if your website name isn't your brand name?
Fruit of the Loom clothing company owns fruit.com. However, the company is not widely known as "fruit.com". They are doing business as "Fruit of the Loom", not "fruit.com". Therefore, even though they own the website and are a well-known company, Fruit of the Loom cannot trademark the generically named fruit.com. (But neither can anyone else.) 🍇
Booking.com is allowed to trademark the generically named "booking.com" because their website name and business name are the same.
6) Should you follow Booking.com's example?
I would not recommend you buy up "ketchup.com" and try to build a brand simply based off of the ability to own a great website domain.
If you want to try, good luck.
Before you buy ketchup.com, take a look at Booking.com’s slog. I’m willing to bet that they would have preferred to go with a more fanciful name if they knew it would take a Supreme Court case to get trademarked.