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

Thu Jul 2 04:44:20 UTC 2020

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
>>
>>
>>
>>
>>
>>
>>
>>
>>
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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 <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
>>
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>>
>> lrrc.com
>>
>>
>>
>>
>>
>>
>>
>>
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