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

Thu Jul 2 16:26:57 UTC 2020

Greg,

I will sleep better tonight! I get your point, and the “good faith use” makes big sense.

My only concern is that I know how ruthless scalper are – and to what length (inlcuding TM registrations in sunrises) they go. That’s why I get scared when I see decisions like this one.

But your explanation makes sense.

Thanks,

Alexander

From: Greg Shatan [mailto:gregshatanipc at gmail.com] 
Sent: Donnerstag, 2. Juli 2020 19:14
To: Alexander Schubert <alexander at schubert.berlin>
Cc: 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

Alexander,

I'll let Paul answer the question you posed to him.  I will note that "the right to deny others" is really a patent law concept (i.e., that the specific primary right granted is a negative right, not a positive right).  Trademark rights are primarily positive rights, i.e., the right to use a trademark to identify one's goods and services and to distinguish them from the goods and services of others.  These rights include the ability to enforce those rights against others, since a right without a remedy is not much of a right.  The scope of enforcement for a given trademark will vary significantly for various reasons, many rooted in the goal of avoiding potential consumer confusion.  

The language from Justice Ginsburg (quoted by Paul) discusses the limits that Booking.com might encounter in seeking to enforce its trademark rights.  You may wish to consider whether your question is consistent with the guidance provided by Justice Ginsburg.  You may also wish to consider whether there is any non-hypothetical possibility that a business will use <example.com <http://example.com> > as its own trademark when it does not own the domain name <example.com <http://example.com> >.  Considering such use even hypothetically, it seems unlikely that such use would be a "good faith" use.  This makes such good faith hypothetical use an edge case of an edge case of a hypothetical that is unlikely to be anything other than hypothetical.  I humbly submit that this class of hypothetical is almost uniquely ill-suited to be used as a basis for policymaking.  (Note, however, that law professors love to pose such hypotheticals, precisely to cause pain and suffering to their students....)

Best regards,

Greg

On Thu, Jul 2, 2020 at 11:48 AM Alexander Schubert <alexander at schubert.berlin <mailto:alexander at schubert.berlin> > wrote:

Paul,

I don’t understand: Are you arguing that because Booking.com won the right to deny third parties using the letter combination “booking.com <http://booking.com> ” in connotation with hotel booking services an applicant for a generic string based gTLD could deny public access to the new gTLD namespace? 

Question:
In your opinion; if the domain registration for  booking.com <http://booking.com>  would expire, could Booking.com deny the new registrant from offering hotel booking services on a website to which the domain routes – based on their “booking.com <http://booking.com> ” TM (once they have it)?

Thanks,

Alexander

From: Gnso-newgtld-wg [mailto:gnso-newgtld-wg-bounces at icann.org <mailto:gnso-newgtld-wg-bounces at icann.org> ] On Behalf Of McGrady, Paul D.
Sent: Donnerstag, 2. Juli 2020 18:13
To: Justine Chew <justine.chew at gmail.com <mailto:justine.chew at gmail.com> >; Rubens Kuhl <rubensk at nic.br <mailto:rubensk at nic.br> >
Cc: gnso-newgtld-wg at icann.org <mailto: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

Thanks Justine.  Understood.  And to be clear, SCOTUS doesn’t address our exact debate (although we are mentioned in the one-man dissent but in that dissent Justice Breyer specifically mentions how new gTLD registries are building brand awareness for their brands, e.g. .club – so again helpful to those who believe <.+generic term> TLDs should remain available as they were in the AGB2012 Guidebook), it just dispatched the fear-of-not-being-able-to-use-the-term argument upon which the <anti-.+ generic term> have built their case and generally takes a big swing at per se rules.  Lucky timing, since it gives this WG another chance to actually make Policy as the Board asked us to do rather than just saying “we don’t know.”  

I understand why those whose position is essentially vitiated by this SCOTUS decision want to push hard to get the topic removed from discussion now that this case it out.  Even so, hopefully the Co-chairs will give this the time it was promised.

Best,

Paul

From: Justine Chew < <mailto:justine.chew at gmail.com> justine.chew at gmail.com> 
Sent: Wednesday, July 1, 2020 11:44 PM
To: Rubens Kuhl < <mailto:rubensk at nic.br> rubensk at nic.br>; McGrady, Paul D. < <mailto:PMcGrady at taftlaw.com> PMcGrady at taftlaw.com>
Cc:  <mailto:gnso-newgtld-wg at icann.org> 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

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 <mailto: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 <mailto: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 <mailto: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 “ <http://booking.com/> 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 “ <http://booking.com/> Booking.com.” Rather, the PTO fears that trademark protection for “ <http://booking.com/> Booking.com” could exclude or inhibit competitors from using the term “booking” or adopting domain names like “ <http://ebooking.com/> ebooking.com” or “ <http://hotel-booking.com/> hotel-booking.com.” Brief for Petitioners 27–28. The PTO’s objection, therefore, is not to exclusive use of “ <http://booking.com/> 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 “ <http://booking.com/> Booking.com” would not yield its holder a monopoly on the term “booking.”  <http://booking.com/> Booking.com concedes that “ <http://booking.com/> Booking.com” would be a “weak” mark. Tr. of Oral Arg. 66. See also id., at 42–43, 55. The mark is descriptive,  <http://booking.com/> 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,”  <http://booking.com/> Booking.com accepts that close variations are unlikely to infringe. Id., at 66. And  <http://booking.com/> Booking.com acknowledges that federal registration of “ <http://booking.com/> 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 < <mailto:justine.chew at gmail.com> justine.chew at gmail.com> 
Sent: Wednesday, July 1, 2020 8:51 PM
To: McGrady, Paul D. < <mailto:PMcGrady at taftlaw.com> PMcGrady at taftlaw.com>
Cc: Aikman-Scalese, Anne < <mailto:AAikman at lrrc.com> AAikman at lrrc.com>;  <mailto:gnso-newgtld-wg at icann.org> gnso-newgtld-wg at icann.org
Subject: Re: [Gnso-newgtld-wg] Client Alert - Supreme Court Finds  <http://booking.com/> 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 <mailto: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 <https://www.law360.com/dockets/download/5efb47347da17405e86713cb?doc_url=https%3A%2F%2Fwww.supremecourt.gov%2Fopinions%2F19pdf%2F19-46_8n59.pdf&label=Opinion> &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 <mailto: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 <mailto: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 <http://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

 <mailto:AAikman at lrrc.com> AAikman at lrrc.com

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Lewis Roca Rothgerber Christie LLP

One South Church Avenue, Suite 2000

Tucson, Arizona 85701-1611

 <http://lrrc.com/> lrrc.com

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