[Gnso-newgtld-wg] Client Alert - Supreme Court Finds BOOKING.COM Non-Generic And Capable Of Federal Trademark Registration

Thu Jul 2 16:13:37 UTC 2020

Alexander,

I'll let Paul answer the question you posed to him.  I will note that "the
right to deny others" is really a patent law concept (i.e., that the
specific primary right granted is a negative right, not a positive right).
Trademark rights are primarily positive rights, i.e., the right to use a
trademark to identify one's goods and services and to distinguish them from
the goods and services of others.  These rights include the ability to
enforce those rights against others, since a right without a remedy is not
much of a right.  The scope of enforcement for a given trademark will vary
significantly for various reasons, many rooted in the goal of avoiding
potential consumer confusion.

The language from Justice Ginsburg (quoted by Paul) discusses the limits
that Booking.com might encounter in seeking to enforce its trademark
rights.  You may wish to consider whether your question is consistent with
the guidance provided by Justice Ginsburg.  You may also wish to consider
whether there is any non-hypothetical possibility that a business will use <
example.com> as its own trademark when it does not own the domain name <
example.com>.  Considering such use even hypothetically, it seems unlikely
that such use would be a "good faith" use.  This makes such good faith
hypothetical use an edge case of an edge case of a hypothetical that is
unlikely to be anything other than hypothetical.  I humbly submit that this
class of hypothetical is almost uniquely ill-suited to be used as a basis
for policymaking.  (Note, however, that law professors love to pose such
hypotheticals, precisely to cause pain and suffering to their students....)

Best regards,

Greg

On Thu, Jul 2, 2020 at 11:48 AM Alexander Schubert
<alexander at schubert.berlin> wrote:

> Paul,
>
>
>
> I don’t understand: Are you arguing that because Booking.com won the right
> to deny third parties using the letter combination “booking.com” in
> connotation with hotel booking services an applicant for a generic string
> based gTLD could deny public access to the new gTLD namespace?
>
>
> Question:
> In your opinion; if the domain registration for  booking.com would
> expire, could Booking.com deny the new registrant from offering hotel
> booking services on a website to which the domain routes – based on their “
> booking.com” TM (once they have it)?
>
> Thanks,
>
>
>
> Alexander
>
>
>
>
>
>
>
> *From:* Gnso-newgtld-wg [mailto:gnso-newgtld-wg-bounces at icann.org] *On
> Behalf Of *McGrady, Paul D.
> *Sent:* Donnerstag, 2. Juli 2020 18:13
> *To:* Justine Chew <justine.chew at gmail.com>; Rubens Kuhl <rubensk at nic.br>
> *Cc:* gnso-newgtld-wg at icann.org
> *Subject:* Re: [Gnso-newgtld-wg] Client Alert - Supreme Court Finds
> BOOKING.COM Non-Generic And Capable Of Federal Trademark Registration
>
>
>
> Thanks Justine.  Understood.  And to be clear, SCOTUS doesn’t address our
> exact debate (although we are mentioned in the one-man dissent but in that
> dissent Justice Breyer specifically mentions how new gTLD registries are
> building brand awareness for their brands, e.g. .club – so again helpful to
> those who believe <.+generic term> TLDs should remain available as they
> were in the AGB2012 Guidebook), it just dispatched the
> fear-of-not-being-able-to-use-the-term argument upon which the <anti-.+
> generic term> have built their case and generally takes a big swing at per
> se rules.  Lucky timing, since it gives this WG another chance to actually
> make Policy as the Board asked us to do rather than just saying “we don’t
> know.”
>
>
>
> I understand why those whose position is essentially vitiated by this
> SCOTUS decision want to push hard to get the topic removed from discussion
> now that this case it out.  Even so, hopefully the Co-chairs will give this
> the time it was promised.
>
>
>
> Best,
>
> Paul
>
>
>
>
>
>
>
> *From:* Justine Chew <justine.chew at gmail.com>
> *Sent:* Wednesday, July 1, 2020 11:44 PM
> *To:* Rubens Kuhl <rubensk at nic.br>; McGrady, Paul D. <PMcGrady at taftlaw.com
> >
> *Cc:* gnso-newgtld-wg at icann.org
> *Subject:* Re: [Gnso-newgtld-wg] Client Alert - Supreme Court Finds
> BOOKING.COM Non-Generic And Capable Of Federal Trademark Registration
>
>
>
> Paul, I wasn't suggesting we dismiss what SCOTUS said, but as we well
> know, there could be room to distinguish court decisions. But I will read
> the SCOTUS judgment, thanks to you.
>
> Rubens, sorry to not be helpful here - I don't know - but it's not
> inconceivable to me that a (supreme) court of a different jurisdiction may
> choose to hold a different view.
>
>
> Kind regards,
>
> Justine
> ---
>
>
>
>
>
> On Thu, 2 Jul 2020 at 11:53, Rubens Kuhl <rubensk at nic.br> wrote:
>
>
>
> Is there a position on generic trademarks in general from WIPO ?
>
>
>
>
>
> Rubens
>
>
>
>
>
>
>
> On 2 Jul 2020, at 00:05, Justine Chew <justine.chew at gmail.com> wrote:
>
>
>
> Hi Paul, thanks for the pdf.
>
> I can't help but to wonder what might happen if a (supreme) court of
> another jurisdiction were to hold a different view.
>
>
> Kind regards,
>
> Justine
> ---
>
>
>
>
>
> On Thu, 2 Jul 2020 at 10:49, McGrady, Paul D. <PMcGrady at taftlaw.com>
> wrote:
>
> Thanks Justine.  I’ve attached a PDF for you.  I’m not familiar with the
> contents of the other commentary article you mention, but I think the
> actual opinion by Ginsburg makes it clear that the per se rule is quite
> abolished at the USPTO.
>
>
>
> The Justice writes:
>
>
>
> “The PTO’s principal concern is that trademark protection for a term like “
> Booking.com <http://booking.com/>” would hinder competitors. But the PTO
> does not assert that others seeking to offer online hotel-reservation
> services need to call their services “Booking.com <http://booking.com/>.”
> Rather, the PTO fears that trademark protection for “Booking.com
> <http://booking.com/>” could exclude or inhibit competitors from using
> the term “booking” or adopting domain names like “ebooking.com” or “
> hotel-booking.com.” Brief for Petitioners 27–28. The PTO’s objection,
> therefore, is not to exclusive use of “Booking.com <http://booking.com/>”
> as a mark, but to undue control over similar language, *i.e.*,
> “booking,” that others should remain free to use.
>
> That concern attends any descriptive mark. Responsive to it, trademark law
> hems in the scope of such marks short of denying trademark protection
> altogether. Notably, a competitor’s use does not infringe a mark unless it
> is likely to confuse consumers. See §§1114(1), 1125(a)(1)(A); 4 McCarthy
> §23:1.50 (collecting state law). In assessing the likelihood of confusion,
> courts consider the mark’s distinctiveness: “The weaker a mark, the fewer
> are the junior uses that will trigger a likelihood of consumer confusion.”
> 2 *id.*, §11:76. When a mark incorporates generic or highly descriptive
> components, consumers are less likely to think that other uses of the
> common element emanate from the mark’s owner. *Ibid. *Similarly, “[i]n a
> ‘crowded’ field of look-alike marks” (*e.g.*, hotel names including the
> word “grand”), consumers “may have learned to carefully pick out” one mark
> from another. *Id.*, §11:85. And even where some consumer confusion
> exists, the doctrine known as classic fair use, see *id.*, §11:45,
> protects from liability anyone who uses a descriptive term, “fairly and in
> good faith” and “otherwise than as a mark,” merely to describe her own
> goods. 15 U. S. C. §1115(b)(4); see *KP Permanent Make-Up*, *Inc. *v. *Lasting
> Impression I*, *Inc.*, 543 U. S. 111, 122–123 (2004).
>
> These doctrines guard against the anticompetitive effects the PTO
> identifies, ensuring that registration of “Booking.com
> <http://booking.com/>” would not yield its holder a monopoly on the term
> “booking.” Booking.com <http://booking.com/> concedes that “Booking.com
> <http://booking.com/>” would be a “weak” mark. Tr. of Oral Arg. 66. See
> also *id.*, at 42–43, 55. The mark is descriptive, Booking.com
> <http://booking.com/> recognizes, making it “harder . . . to show a
> likelihood of confusion.” *Id.*, at 43. Furthermore, because its mark is
> one of many “similarly worded marks,” Booking.com <http://booking.com/>
> accepts that close variations are unlikely to infringe. *Id.*, at 66. And
> Booking.com <http://booking.com/> acknowledges that federal registration
> of “Booking.com <http://booking.com/>” would not prevent competitors from
> using the word “booking” to describe their own services. *Id.*, at 55.”
>
>
>
> So, those against <.+ generic term> TLDs are going to have to find some
> other basis to argue that there will be some sort of harm.  This leaves the
> opponents with (1) being against them because they didn’t apply but their
> competitors did; (2) they are a registrar that can’t make any money on
> them; (3) a bias against free speech; (4) a bias against nascent
> trademarks.  None of these are nearly as noble sounding as the fear about
> competitive harm, but Ginsburg has nicely dispatched that fear.  Sure would
> be nice if the Co-chairs would allow more time, as initially promised, so
> that we can develop some policy.  This decision by SCOTUS is very
> instructive and we should take the time to understand it and build
> guardrails around the <.+ generic term> TLDs instead of just throwing our
> hands up and sending nothing the Board instead of the something they asked
> us for.
>
>
>
>
>
> Best,
>
> Paul
>
>
>
>
>
>
>
> *From:* Justine Chew <justine.chew at gmail.com>
> *Sent:* Wednesday, July 1, 2020 8:51 PM
> *To:* McGrady, Paul D. <PMcGrady at taftlaw.com>
> *Cc:* Aikman-Scalese, Anne <AAikman at lrrc.com>; gnso-newgtld-wg at icann.org
> *Subject:* Re: [Gnso-newgtld-wg] Client Alert - Supreme Court Finds
> BOOKING.COM <http://booking.com/> Non-Generic And Capable Of Federal
> Trademark Registration
>
>
>
> Hi Paul,
>
> The link you offered is one behind a paywall, so not very useful for me as
> a non-subscriber.
>
> But I note that Winterfeldt IP Group has also released a client advisory
> which points to uncertainty and important element(s) not raised in the
> appeal and therefore not considered by SCOTUS.
>
>
> Kind regards,
>
> Justine
> ---
>
>
>
>
>
> On Wed, 1 Jul 2020 at 10:51, McGrady, Paul D. <PMcGrady at taftlaw.com>
> wrote:
>
> Thanks Anne.
>
>
>
> All, here is the link to the actual decision:
> https://www.law360.com/dockets/download/5efb47347da17405e86713cb?doc_url=https%3A%2F%2Fwww.supremecourt.gov%2Fopinions%2F19pdf%2F19-46_8n59.pdf&label=Opinion.
> The Supreme Court strikes down the USPTO’s per se rule against allowing
> trademark registration for generic term + trademark.  Justice Ginsburg does
> a great job of pointing out why people who are worried about a competitor
> no longer being able to use the generic word (e.g. claims that there would
> be a monopoly on such a term) have nothing to fear.  It’s a great read.  I
> wish we could get her on one of our calls!
>
>
>
> The same is, of course, true in ICANNland – a so-called closed generic for
> .hammers would not stop anyone from using “hammers” to identify hammers.
> And, just like the for the USPTO, a per se rule against them makes no
> sense.  This is, no doubt, why the ICANN Board deferred the 2012 closed
> generic applications to the upcoming round and asked us to develop policy
> to deal with those deferred applications.  I remain hopeful, against all
> nay saying to the contrary, that we can still eek out some policy here as
> the Board asked us to do.
>
>
>
> Best to all,
>
> Paul
>
>
>
>
>
>
>
>
>
> To receive regular COVID-19 updates from Taft, subscribe here
> <https://www.taftlaw.com/general/subscribe>. For additional resources,
> visit Taft's COVID-19 Resource Toolkit
> <https://www.taftlaw.com/general/coronavirus-covid-19-resource-toolkit>.
>
> This message may contain information that is attorney-client privileged,
> attorney work product or otherwise confidential. If you are not an intended
> recipient, use and disclosure of this message are prohibited. If you
> received this transmission in error, please notify the sender by reply
> e-mail and delete the message and any attachments.
>
> *From:* Gnso-newgtld-wg <gnso-newgtld-wg-bounces at icann.org> *On Behalf Of
> *Aikman-Scalese, Anne
> *Sent:* Tuesday, June 30, 2020 7:12 PM
> *To:* gnso-newgtld-wg at icann.org
> *Subject:* [Gnso-newgtld-wg] FW: Client Alert - Supreme Court Finds
> BOOKING.COM <http://booking.com/> Non-Generic And Capable Of Federal
> Trademark Registration
>
>
>
> Dear WG members,
>
> Just in case anyone on the list is wondering about the US Supreme Court
> decision in the booking.com trademark case that Paul and I were
> discussing on the list, please see attached summary.  Again, my view is
> this is a “secondary meaning” case with uncontested evidence that consumers
> recognized the domain as a source indicator of the owner’s services.
>
>
>
> Thank you,
>
> Anne
>
>
>
> *Anne E. Aikman-Scalese*
>
> Of Counsel
>
> 520.629.4428 office
>
> AAikman at lrrc.com
>
> _____________________________
>
> <image001.png>
>
> Lewis Roca Rothgerber Christie LLP
>
> One South Church Avenue, Suite 2000
>
> Tucson, Arizona 85701-1611
>
> lrrc.com
>
>
>
>
>
>
>
>
> ------------------------------
>
>
> This message and any attachments are intended only for the use of the
> individual or entity to which they are addressed. If the reader of this
> message or an attachment is not the intended recipient or the employee or
> agent responsible for delivering the message or attachment to the intended
> recipient you are hereby notified that any dissemination, distribution or
> copying of this message or any attachment is strictly prohibited. If you
> have received this communication in error, please notify us immediately by
> replying to the sender. The information transmitted in this message and any
> attachments may be privileged, is intended only for the personal and
> confidential use of the intended recipients, and is covered by the
> Electronic Communications Privacy Act, 18 U.S.C. §2510-2521.
>
>
>
> _______________________________________________
> Gnso-newgtld-wg mailing list
> Gnso-newgtld-wg at icann.org
> https://mm.icann.org/mailman/listinfo/gnso-newgtld-wg
> _______________________________________________
> By submitting your personal data, you consent to the processing of your
> personal data for purposes of subscribing to this mailing list accordance
> with the ICANN Privacy Policy (https://www.icann.org/privacy/policy) and
> the website Terms of Service (https://www.icann.org/privacy/tos). You can
> visit the Mailman link above to change your membership status or
> configuration, including unsubscribing, setting digest-style delivery or
> disabling delivery altogether (e.g., for a vacation), and so on.
>
>
>
> _______________________________________________
> Gnso-newgtld-wg mailing list
> Gnso-newgtld-wg at icann.org
> https://mm.icann.org/mailman/listinfo/gnso-newgtld-wg
> _______________________________________________
> By submitting your personal data, you consent to the processing of your
> personal data for purposes of subscribing to this mailing list accordance
> with the ICANN Privacy Policy (https://www.icann.org/privacy/policy) and
> the website Terms of Service (https://www.icann.org/privacy/tos). You can
> visit the Mailman link above to change your membership status or
> configuration, including unsubscribing, setting digest-style delivery or
> disabling delivery altogether (e.g., for a vacation), and so on.
>
>
>
> _______________________________________________
> Gnso-newgtld-wg mailing list
> Gnso-newgtld-wg at icann.org
> https://mm.icann.org/mailman/listinfo/gnso-newgtld-wg
> _______________________________________________
> By submitting your personal data, you consent to the processing of your
> personal data for purposes of subscribing to this mailing list accordance
> with the ICANN Privacy Policy (https://www.icann.org/privacy/policy) and
> the website Terms of Service (https://www.icann.org/privacy/tos). You can
> visit the Mailman link above to change your membership status or
> configuration, including unsubscribing, setting digest-style delivery or
> disabling delivery altogether (e.g., for a vacation), and so on.
>
>
> _______________________________________________
> Gnso-newgtld-wg mailing list
> Gnso-newgtld-wg at icann.org
> https://mm.icann.org/mailman/listinfo/gnso-newgtld-wg
> _______________________________________________
> By submitting your personal data, you consent to the processing of your
> personal data for purposes of subscribing to this mailing list accordance
> with the ICANN Privacy Policy (https://www.icann.org/privacy/policy) and
> the website Terms of Service (https://www.icann.org/privacy/tos). You can
> visit the Mailman link above to change your membership status or
> configuration, including unsubscribing, setting digest-style delivery or
> disabling delivery altogether (e.g., for a vacation), and so on.
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://mm.icann.org/pipermail/gnso-newgtld-wg/attachments/20200702/75e9d918/attachment-0001.html>