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

Justine Chew justine.chew at gmail.com
Thu Jul 2 03:05:35 UTC 2020


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” 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.” Rather, the PTO fears that trademark
> pro­tection for “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” 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” would not yield
> its holder a monopoly on the term “booking.” Booking.com concedes that “
> 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 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 accepts that close variations are unlikely to infringe. *Id.*,
> at 66. And Booking.com acknowledges that federal registration of “
> 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 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
>
>
>
>
>
>
>
>
>
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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
>
> _____________________________
>
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>
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>
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>
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>
>
>
>
>
>
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