United States: Ask A Trademark Lawyer How To Trademark Your Domain Name

Last Updated: September 14 2017
Article by David O. Klein

In a potentially groundbreaking decision (Booking.com B.V. v. Matal, et al., Index No. 16-cv-425 (the "Trademark Lawsuit")), a U.S. District Court recently overruled the U.S. Patent and Trademark Office ("USPTO") and ordered the USPTO to register BOOKING.COM as a trademark.  The Trademark Lawsuit reinforces the importance of consulting with an experienced trademark lawyer when registering and enforcing a mark.

Booking.com B.V. ("Booking") filed the subject Trademark Lawsuit after the USPTO rejected Booking's trademark application for its domain name, BOOKING.COM, because the examiner found that the mark was merely descriptive of Booking's services (e.g., booking hotel rooms over the Internet) and was, therefore, unregisterable.

However, in an opinion dated August 9, 2017, Judge Leonie Brinkema of the U.S. District Court for the Eastern District of Virginia reversed the USPTO's decision, finding that BOOKING.COM is a descriptive mark that has acquired secondary meaning as to the hotel reservation services described in Class 43.

How can a trademark lawyer help protect domain name owners and their valuable intellectual property?

Domain Name Trademark Lawsuit Analysis

In addressing the Trademark Lawsuit, Judge Brinkema began her opinion by explaining the distinct portions of domain names, noting that top-level domains ("TLDs") are the suffixes in a domain name, such as ".com," and second-level domains ("SLDs") are the prefixes, such as "booking."

The Court next analyzed whether a TLD has source identifying significance—a question of first impression.  To determine the issue, Judge Brinkema looked to a federal circuit court decision (the "Mattress Decision"), which found that "1-888-MATRESS" could be trademarked because the telephone number was unique, and the mnemonic phone number 1-888-M-A-T-R-E-S-S indicated that services relating to the mark were available by dialing the phone number.

Judge Brinkema found the reasoning in the Mattress Decision to be persuasive authority in reaching a decision in the Trademark Lawsuit, stating:

Although a TLD, like an area code, has no source identifying significance by itself, in combination with a SLD, it indicates a domain name, which, like a telephone number, is unique.  Moreover, like the mnemonic phone number 1-888-M-A-T-R-E-S-S, the combination of a TLD and a generic SLD creates a descriptive mark by indicating that services relating to the generic SLD are available by accessing the domain name.  Finally, whether such a mark is entitled to trademark protection depends on whether the applicant can demonstrate that it has acquired distinctiveness.

The Court then found that the BOOKING.COM mark had acquired distinctiveness based, in part, on Booking's substantial advertising and sales, specifically:

  • Booking's branded television commercials received 1.3 billion views from U.S. customers in 2015 and 1.1 billion views in 2016;
  • Booking's Internet advertisements received 212 million views from U.S. customers in 2015 and 1.34 billion views in 2016;
  • Booking conducted billions of dollars' worth of transactions with U.S. customers each year; and
  • Booking's mobile app was downloaded approximately 5.4 million times in 2014, 2015 and 2016, in the aggregate.

Thus, the Court found that the BOOKING.COM mark was distinctive and should be registered for the hotel reservation services described in Class 43.

How A Trademark Lawyer Can Help Register Your Domain Name Trademark

Many trademark-related legal risks can be minimized or eliminated entirely by working with an experienced trademark lawyer before issues arise.  A trademark lawyer can help to carefully vet domain names and other business branding features (such as logos, designs and slogans) to minimize the risk of unwelcome legal surprises down the road.  Businesses that are interested in trademarking a domain name should consult with an experienced trademark lawyer to help increase the chances of successful registration. 

Related Blog Posts:

Trademark Enforcement and Internet Search Advertising: A Regulatory Risk for Brand Owners

Webster Hall Brand Name Dispute, and the Importance of a Trademark Lawyer

Warner Bros., Trademark Lawyers Target "Golden Ticket" Beer Brand

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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David O. Klein
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