GENERIC NAMES MAY QUALIFY FOR PROTECTION

| Nov 2, 2020 | Intellectual Property Litigation

When considering trademark protection, there is usually an expectation that the mark being considered is not generic enough to be viewed as something anyone can use. Making it impossible for companies to use generic words and phrases could really limit their ability to communicate with their customer base. That’s not the idea behind trademark protections. The goal is to protect unique, distinctive marks so that those who came up with them can benefit from them.

However, don’t assume that generic words can never be trademarked, even when connected with generic domain names. The precedent has already been set, indicating that these combinations are not “automatically generic.” That determination was made in a case involving the website Booking.com.

Both parts of that term are clearly generic, with booking simply being a term referring to making a reservation and .com being the most common domain extension on the planet. However, if consumers see it as something that stands out and is distinctive, a term like this can still qualify for protection.

What matters is if the consumers see it as a brand identifier or not. If they do, it can be protected because it is then part of the company’s image and branding efforts. If they do not, instead seeing it as little more than a common term, then it cannot. This must be decided on a case-by-case basis, with the Booking.com case serving merely as an example of how it can work. Not every single mark is going to qualify, but it is at least theoretically possible, and that’s why companies and brands must know what options they have to best protect their trademarks and the investment they’ve made in their brands.

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