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

[Laxmi Yadav]

Nothing to worry, it is great decision considering ICANN 
Laxmi Prasad Yadav 

Sent from my iPhone

> On Jul 1, 2020, at 8:40 AM, Mohamed Aslam <aslam at ilipconsulting.com> wrote:
> 
>  Hear hear! The judgement is a booster shot for ICANN‘s revenue growth. 
> Sincerely
> Mohamed Aslam
> ILIPconsulting.com 
> 
>>> On Jun 30, 2020, at 22:51, 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
>>  
>>  
>>  
>> 
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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
>> _____________________________
>> <image001.png>
>> Lewis Roca Rothgerber Christie LLP
>> One South Church Avenue, Suite 2000
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>>  
>>  
>>  
>>  
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