Who Are You? Difficulties in Obtaining Trademark Protection for Domain Names

• Jurisdiction: United States,Federal
• Publication year: 2012
• Citation: Vol. 8 No. 1

Washington Journal of Law, Technology and Arts Volume 8, Issue 1 Summer 2012

Who Are You? Difficulties IN Obtaining Trademark Protection FOR Domain Names

Luke M. Rona(fn*)© Luke M. Rona

Abstract

Three appellate decisions illustrate the difficulty of acquiring trademark protection for domain names that include a top-level domain ("TLD"), such as ".com." Courts have characterized these marks as generic or merely descriptive, which carries implications for the party seeking registration: generic marks cannot be protected, while descriptive marks can, assuming they possess a secondary meaning that makes the mark distinctive. Generic and descriptive domain names often indicate the services a company provides, with the addition of the ".com" TLD to indicate online services. One key test of genericness is whether the public identifies the mark with a service generally or with a company specifically. This Article examines the rationales supporting the generic-descriptive distinction for domain names with TLDs. When a website does more than merely sell a product online that could be obtained in a brick and mortar store-such as providing additional consumer tools and flexibility unique to the online medium-the domain name has an increased chance of being viewed as descriptive and potentially protectable.

Table of Contents

Introduction .................................................................................... 62

I. Trademark Distinctiveness Overview ..................................... 63

II. Registration/Appeals Process and Standard of Review .......... 65

A. Trademark Registration Appeals ....................................... 65

B. Trademark Infringement Appeal ........................................ 66

III. STEELBUILDING.COM: Descriptive, But Lacking Secondary Meaning ................................................................ 67

A. Generic Mark Test ............................................................. 67

B. Examining the Entire Mark, Including the TLD ................ 68

C. "STEELBUILDING.COM" Is Merely Descriptive ........... 70

IV. In re 1800MATRESS.COM: A Simpler Case of Genericness ............................................................................. 71

V. Advertise.com: Generic Categorization In an Infringement Case ......................................................................................... 73

VI. Case Law Synthesis: Verbs, Double Entendres, and Consumer Perception .............................................................. 75

VII. New Frontiers: ".Sports" and Beyond .................................... 76

Conclusion ..................................................................................... 77

Practice Pointers ............................................................................. 78

Introduction

Several recent federal appeals court opinions have denied federal trademark protection to online domain names such as "STEELBUILDING.COM," "MATTRESS.COM," and "ADVERTISE.COM," citing their generic nature or lack of descriptiveness.(fn1) In the process, the courts have blurred the distinction between generic and merely descriptive marks. Generic terms that describe what the service is, instead of who provides the service, rarely gain protection through the addition of the top-level domain ("TLD") ".com" as part of a domain name. Generic marks cannot be registered under trademark law. Descriptive marks must have a secondary meaning that identifies the source of the service, as recognized by the consuming public, for possible federal trademark protection. The addition of a TLD does not enhance the potential trademark protection of generic or descriptive domain names, but the possibility of new TLDs such as ".sports" or ".law" will present new frontiers for possible trademark registration.

This Article provides a brief overview of trademark distinctiveness and standards of review, and then examines the rationales behind three federal appellate court decisions, including two registration appeals and one trademark infringement appeal. Next, the Article attempts to synthesize what factors a court might consider when categorizing a domain name as generic or descriptive. Finally, the Article considers the recent announcement that the universe of TLDs will soon be expanded significantly.

I. Trademark Distinctiveness Overview

Marks are generally classified in one of four categories: generic, descriptive, suggestive, or arbitrary/fanciful.(fn2) These "lines of demarcation, however, are not always bright," and a "term may shift from one category to another in light of differences in usage through time."(fn3)

A generic term is one that "refers, or has come to be understood as referring, to the genus of which the particular product is a species."(fn4) A generic term, by definition, identifies a type of product, not the source of the product.(fn5) Generic terms are not entitled to legal protection.(fn6) A generic term "cannot function as an indicator of the source of a product . . . because the relevant public understands the term primarily as the common name for the product."(fn7) As distinguished from descriptive marks, generic terms cannot be saved even by proof of secondary meaning.(fn8) Courts deny trademark protection for generic marks because a trademark cannot deprive competing manufacturers of "the right to call an article by its name."(fn9)

A non-generic mark that is deemed "merely descriptive," because it describes a good or service, will likewise not receive trademark protection.(fn10) Protecting merely descriptive marks would "confer a monopoly not only of the mark but of the product by rendering a competitor unable effectively to name what it was endeavoring to sell."(fn11) Yet descriptive marks may qualify for registration if they acquire "secondary meaning," or distinctiveness.(fn12) To show that a mark has acquired distinctiveness, the applicant must demonstrate that "the relevant public understands the primary significance of the mark as identifying the source of a product or service rather than the product or service itself."(fn13)

The third category, "suggestive" marks, is difficult to define. One court observed that a term is suggestive if it requires "imagination, thought, and perception to reach a conclusion as to the nature of the goods."(fn14) Judge Learned Hand remarked, "the validity of the mark ends where suggestion ends and description begins."(fn15) "If a term is suggestive, it is entitled to trademark protection without proof of secondary meaning."(fn16) If the U.S. Patent and Trademark Office ("USPTO") registers a mark without requiring proof of secondary meaning, there is "a rebuttable presumption that the mark is suggestive or arbitrary/fanciful, instead of merely descriptive."(fn17)

"Arbitrary" or "fanciful" terms enjoy the trademark protection of suggestive terms, but are not subject to a "merely descriptive" analysis.(fn18) Fanciful, as a "classifying concept," is "usually applied to words invented solely for their use as trademarks."(fn19) Arbitrary categorization can apply to common words used in an unfamiliar way.(fn20) For example, "Apple" is an arbitrary mark for a company that makes computers.(fn21)

II. Registration/Appeals Process and Standard of Review

A. Trademark Registration Appeals

The Trademark Trial and Appeal Board ("TTAB") makes factual determinations of whether an asserted mark is generic.(fn22) The TTAB is an administrative adjudicative body that hears appeals from final registration decisions of trademark examiners.(fn23) To deny the registration of a mark as generic, the USPTO has the burden of "substantially showing . . . that the matter is in fact generic . . . based on clear evidence of generic use."(fn24)

When a plaintiff receives a federal trademark registration from the USPTO, she is entitled to a presumption that the mark is valid.(fn25) Once registered, the trademark owner has the exclusive right to use the mark in commerce in connection with the goods or services specified in registration.(fn26) This presumption of validity can be rebutted with a showing by a preponderance of the evidence that the mark is not...