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

[Justine Chew]

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
>
>
>
>
>
>
>
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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
>
> _____________________________
>
> Lewis Roca Rothgerber Christie LLP
>
> One South Church Avenue, Suite 2000
>
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>
> lrrc.com
>
>
>
>
>
>
>
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