Unless you’re a company with a new product or a patent attorney, you’re probably not thinking about trademarks. Most of us see them every day on the Internet, in stores, or even at home – they are just part of doing business in the United States. In fact, brands are rather curious beasts, especially 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 his “Dear Expert” column in the January/February issue of The financial director, posting for MFM members, Raju discusses how a June 2020 U.S. Supreme Court ruling may have been a huge game-changer for media companies considering registering their domain names for the purpose of gain an advantage over their competitors.
I also did some research on my own and found that the decision might have bigger implications. Booking.com, the online travel company that is doing so well that it ran 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 of Raju’s column: the question posed to him as an expert comes from a fictional radio station asking if changing the laws could allow the owner to trademark the term “FMradiostation.com” . This action is equivalent 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 at first glance it seems that this request would not stand a chance, the Supreme Court said otherwise.
In its simplest terms, the Supreme Court decision stated that generic names can be registered by a business as a URL if that URL is recognizable to consumers as being associated with a certain business. But, Raju warns, the burden of proof will be on the company trying to register the name.
For context, Raju explains that in general, generic terms are generally not allowed to be trademarked and are not eligible for federal registration because receiving a trademark makes that generic name unavailable to competitors. She takes the example of a company seeking to trademark the generic name “television station” for broadcast services, because other television broadcasters would not be allowed to use that name to describe or promote their own services.
the Booking.com the case overturned that premise. When Booking.com first filed a trademark application in 2012, the Patent and Trademark Office (PTO) refused to register Booking.com, finding the term “booking” to be generic for hotel booking services. online hotel, and simply adding the top-level “.com” domain would not take the brand out of generic territory.
The Supreme Court had to decide whether a generic term combined with a “.com” domain name would result in a combined generic term because consumers associate the name with a specific business. Along with evidence submitted in an earlier state-level appeal, including a survey indicating that 74.8% of consumers recognized “Booking.com” as a brand rather than a generic serviceBooking.com successfully argued that since it had been in business (with the same URL) since 1996 and ranked first for consumer satisfaction among travel sites by JD Power, it had established the generic name “reservation” as one that makes sense to consumers.
“Because ‘Booking.com’ is not a generic name for consumers, it is not generic,” Judge Ruth Bader Ginsburg wrote. The Supreme Court noted that the past practice of PTO did not follow its own rules, pointing to the registration of Art.com on the main register of online retail services offering fine art prints, and the registration of Encounters.com on the additional register of dating services.
If you’re a media company considering following Booking.com’s steps, Raju has some well-measured advice – and much of it revolves around conducting a brand survey. The purpose of a trademark survey is to provide evidence that the URL you are considering filing has acquired distinctiveness – in the form of consumer surveys, consumer statements, advertising spend 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 investigations can be an expensive proposition, often costing upwards of $35,000, with some experts questioning whether they are necessary or even often considered by decision makers. Consumer brand surveys, submitted as part of the overall brand survey, can be an even stickier one-stop shop and should be created and executed in a way that demonstrates that they are a reliable representation of how consumers perceive your proposed brand.
If you choose to go ahead with a trademark investigation, Raju offers some very tactical advice which she says reflects all trademark enforcement rules, and I have taken the liberty of providing it directly to from its column:
- Make sure the generic +TLD mark stands out against the rest of the text by using a different font or unique styling.
- Always use the generic + TLD as an adjective, never as a noun or verb.
- Use a TM next to the generic + TLD to let consumers know you consider it a brand.
- Keep good records of advertising spend and estimates of the number of consumers exposed to advertising and your social media campaigns.
- Consider conducting a trademark survey to support any generic brand + TLD trademark registration application.
Some questions come to mind when I reflect on the implications of the Supreme Court’s decision Booking.com decision. I think the ruling says that the Supreme Court certainly understands that many websites have a particular brand that is meaningful to consumers, and that the Internet, combined with advertising, will continue to wield an increasing level of influence higher on consumers.
But how will the PTO handle current and future trademark requests? Will it examine potential conflicts between existing domain names? And does this change in law ultimately make securing domain name trademarks easier or more difficult?
Speaking of tough questions, a myriad of issues and questions facing media finance professionals in their work are the cornerstone of MFM’s upcoming annual Media Finance Focus conference, which will be held in person for the first time. since 2019 from May 23-25 in Tampa, Florida. The “Blue Skies Ahead” theme signals dozens of informative sessions, distinguished speakers, interactive industry roundtables, networking events and a showroom showcasing the latest industry products and services. I am delighted to meet and interact with those who keep the wheels of media funding turning.
Joe Annotti is President and CEO of Media Financial Management Association and his BCCA subsidiary, the media industry credit association. He can be reached at [email protected] and through the association LinkedIn, Facebook, instagram and Twitter accounts.
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