Hey everyone,
I just came across this interesting article. Although it’s about US law, I think it ponders an important question. The article discusses if adding a “.com” to something relives it of its generic status. Have a quick glance at it and let me know what you think, can “.com” become part of a mark? The article discusses booking.com, the “.com” appears to be part of the mark, as simple saying “booking” would not be helpful in distinguishing the mark. It would be interesting to follow and see if more marks start to include “.com” as part of a trademark, and if this is even possible.
Communications Law
I think the “.com” component is not merely part of the mark, but rather is an essential component of the mark itself. It is in fact the part that functionally distinguishes the mark, even if that is only because only one entity can ever register the “booking.com” domain name at any given time. The business known as “booking.com” never advertises itself as simply “booking”, and a consumer would not necessarily associate the word “booking” itself with the website.
I’m not entirely convinced of the difference between “onlinetrademarkattorney.com” and “booking.com”, as one can choose either of them to identify their own business. Perhaps the distinction is that the former is not useful as a trade name because it is too long and unwieldy, while the latter is more useful as an identifier. I’m sure the lawyers at “criminallawyervancouver.com” and “criminallawyervancouver.ca” would likely prefer that their customers refer to them by their names, than to their domain names. But there really isn’t anything to stop a law firm from self-identifying by their domain name. Perhaps a divorce lawyer might buy up billboards that say “divorcelawyer.ca” and build up a reputation that way, without using their own name. Still much shorter and more attractive than “onlinetrademarkattorney” but I’m not sure how the court can make such a distinction in a principled way.