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

Wed Jul 1 02:50:27 UTC 2020

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

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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 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<mailto:AAikman at lrrc.com>

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