Domain Name Can Be Trademarked, Federal Court Holds

Advertising Law

A new trademark decision that protects a mark that many in the industry thought was a generic term has made the headlines.

Online hotel reservation service sought to trademark its name for providing travel agency services and making hotel reservations via the Internet in separate registrations. The U.S. Patent and Trademark Office (USPTO) denied both applications, finding that the word mark was generic as applied to the relevant services and, in the alternative, was merely descriptive in the absence of any acquired distinctiveness. appealed in a Virginia federal court, and U.S. District Court Judge Leonie M. Brinkema granted summary judgment in favor of the website. She disagreed with the USPTO and prior precedent from the U.S. Court of Appeals for the Federal Circuit finding domain names to be generic.

Although the court concluded that the government established that by itself the word “booking” is generic for the classes of hotel and travel reservation services recited in the plaintiff’s applications, it reached a different conclusion after combining the second-level domain (SLD) “booking” with the top-level domain (TLD) “.com.”

Judge Brinkema distinguished the precedent (such as denials for marks including “” and “”), noting that the first case was decided in 2004, “when the internet was in its infancy and norms regarding domain names were just taking root,” and that “Subsequent opinions have undermined [the earlier cases’] reasoning by recognizing that a TLD indicates a domain name and ‘domain-name recognition is a form of source identification.’”

In electing to treat the issue as one of first impression, the court concluded that “it would be imprudent to adopt a sweeping presumption denying trademark protection to a whole category of domain name marks in the absence of robust evidence that public ownership of this language is necessary for consumers and competitors to describe a class of products or services—evidence that does not appear in the Federal Circuit cases.”

After conducting her own analysis, Judge Brinkema found that “when combined with an SLD, a TLD generally has source identifying significance and the combination of a generic SLD and a TLD is generally a descriptive mark that is protectable upon a showing of acquired distinctiveness.”

Adding a TLD such as “.com” to a generic SLD does more than indicate that a company offers services via the Internet, the court wrote. Instead, it indicates “a unique domain name that can only be owned by one entity. In this respect, unlike a corporate designation, a TLD that functions as part of a domain name does have source identifying significance.”

Granting trademark protection to domain names with generic SLDs would not deprive competitors of the right to describe their goods and services as what they are, Judge Brinkema wrote. She rejected the government’s policy concerns because “the record is replete with evidence that consumers are predisposed to think that a domain name refers to a particular entity.” Rather, the dual purposes of the Lanham Act—protecting consumers and incentivizing brand development—militate for protection, the court said.

The risk of consumer confusion or anticompetitive monopolies is “remote” and “because online goods and services are a significant and ever-growing part of the economy, granting trademarks to producers who primarily offer goods and services online and brand themselves based on their domain name favors the interest of consumers by limiting the prospect of deception and confusion. Incidentally, this also protects the good will generated by producers, often at great effort and expense, and thereby incentivizes brand development.”

The court was careful to note that although the combination of a TLD and a generic SLD can produce a source-identifying domain name, it “is not tantamount to finding that all domain name marks are protectable.” Rather, “a generic SLD combined with a TLD creates a descriptive mark that is eligible for protection only upon a showing of acquired distinctiveness.” met the high bar of uniqueness for one of its applications, the court found. Judge Brinkema noted that the plaintiff provided “persuasive evidence” in the form of a Teflon survey that revealed 74.8 percent of respondents identified as a brand name and that the government failed to show that the survey’s methodological soundness was flawed.

Further, the plaintiff demonstrated that the name had 100,000 followers on Twitter and more than 5 million “likes” on Facebook with regard to hotel reservation services, and therefore the mark had gained a secondary meaning or an acquired distinctiveness. The same could not be said for the travel agency services recited in the other registration.

To read the opinion in v. Matal, click here.

Why it matters: Judge Brinkema attempted to define the boundaries of her opinion by noting that not all domain name marks are protectable, but that a generic SLD combined with a TLD can create a descriptive mark that is eligible for protection only upon a showing it had acquired distinctiveness or a secondary meaning. But the decision has made headlines for granting trademark protection of a domain name, a move that flies in the face of Federal Circuit precedent and could encourage similar filings from websites.



pursuant to New York DR 2-101(f)

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