Today was a big day for domain names. As you might know, Trademark law prevents you from getting a Trademark a generic term for say, something like the word “Wine” and the same used to apply to domain names…but that’s all changing.
For anyone that was rooting for Trademarkable domain names, you have Booking.com to thank. Here’s the scoop:
Trademark law prohibits anyone from registering generic terms that describe a class of products or services. Anyone can start a store company called “The Wine Company,” but they can’t use trademark law to stop others from using the same name. When the online travel giant Bookings Holdings sought to trademark its booking.com domain name almost a decade ago, the US Patent and Trademark Office concluded that the same rule applied.
Booking Holdings challenged this decision in court. The company pointed to survey data showing that consumers associated the phrase “booking.com” with a specific website as opposed to a generic term for travel websites. Both the trial and appeals courts sided with booking.com, finding that booking.com was sufficiently distinctive to merit its own trademark—even if the generic word “booking” couldn’t be trademarked on its own.(Source – Ars Technica)
While this worked for Booking.com, don’t think you can just Trademark any generic domain name you own. The key for Booking.com was showing that consumers saw Booking.com as essentially synonymous with the brand, which makes sense given all the marketing and branding work they’ve done over the years.
If you just went out and bought Bongo.com, don’t expect to get a Trademark just because you own the generic domain, you’ll have to prove that you’ve made that domain synonymous with your brand. Still, in my opinion this makes generic domain names more valuable than ever before, and they were already pretty darn valuable.