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

Aikman-Scalese, Anne AAikman at lrrc.com
Wed Jul 8 16:58:44 UTC 2020


Paul,
Your reference to the booking.com ruling as something that “shreds the notion that generic terms somehow cause competitive harm” is surprising to me.

The US Supreme Court Ruling concluded, based on evidence below, that  booking.com was NOT generic.   It’s a secondary meaning case in which the evidence below clearly demonstrated that the consuming public associates the booking.com site with a SINGLE SOURCE indicator of certain services and related reputation in the marketplace.  In so holding, the court rejected the USPTO practice of always denying registration to a generic term in combination with .com.  Putting aside the question of having US law on secondary meaning govern ICANN policy, I don’t quite understand why you maintain that a generic TLD with multiple second level domain registrations could somehow become a “single source” indicator of quality and service.  In other words, booking.com is a particular source of booking services that provides certain guarantees, payment policies, reputation for quality etc. on which consumers rely.

Since you make references to a “pre-trademark”, you seem to be saying that a closed generic TLD could eventually operate as a trademark for a “single source” indicator after acquiring secondary meaning in the marketplace, even though the registry would be selling multiple second level domain name registrations to thousands of different business sources of goods and services.  Could you please elaborate on your reasoning?  Is this about full quality control by the Registry of goods and services being offered under a particular Closed Generic TLD and is that the basis of your argument for the Public Interest being served?

For those who may not have time to read the full decision, I have tried to pull out the “nut” of the basis for the holding in the text pasted below.  It’s definitely a secondary meaning case and the ruling was that booking.com is NOT generic but is rather a source-indicating trademark via acquired distinctiveness.  The Supreme Court affirmed the 4th Circuit and the lower federal district court findings in this regard.  The text describing those findings is pasted below.

Anne


“Relying in significant part on Booking.com’s new evidence of consumer percep­tion, the District Court concluded that “Booking.com”—un­like “booking”—is not generic. The “consuming public,” the court found, “primarily understands that BOOKING.COM does not refer to a genus, rather it is descriptive of services involving ‘booking’ available at that domain name.” Book-ing.com B.V. v. Matal, 278 F. Supp. 3d 891, 918 (2017). Having determined that “Booking.com” is descriptive, the District Court additionally found that the term has ac­quired secondary meaning as to hotel-reservation services.  For those services, the District Court therefore concluded, Booking.com’s marks meet the distinctiveness requirement for registration.
The PTO appealed only the District Court’s determina­tion that “Booking.com” is not generic. Finding no error in the District Court’s assessment of how consumers perceived the term “Booking.com,” the Court of Appeals for the Fourth Circuit affirmed the court of first instance’s judg­ment. In so ruling, the appeals court rejected the PTO’s contention that the combination of “.com” with a generic term like “booking” “is necessarily generic.” 915 F. 3d 171, 184 (2019).”



From: Gnso-newgtld-wg <gnso-newgtld-wg-bounces at icann.org> On Behalf Of McGrady, Paul D.
Sent: Wednesday, July 8, 2020 6:31 AM
To: alexander at schubert.berlin; 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

[EXTERNAL]
________________________________
Thanks Alexander.  I am not making that argument and so won’t address your variant of an argument I’m not making.

The point of the booking.com decision is that it shreds the arguments that <. + generic term> TLDs will somehow cause a competitive harm.  Shreds.

Best,
Paul


From: Gnso-newgtld-wg <gnso-newgtld-wg-bounces at icann.org<mailto:gnso-newgtld-wg-bounces at icann.org>> On Behalf Of Alexander Schubert
Sent: Thursday, July 2, 2020 10:48 AM
To: 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 Non-Generic And Capable Of Federal Trademark Registration

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” 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 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” TM (once they have it)?

Thanks,

Alexander



From: Gnso-newgtld-wg [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 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 <justine.chew at gmail.com<mailto:justine.chew at gmail.com>>
Sent: Wednesday, July 1, 2020 11:44 PM
To: Rubens Kuhl <rubensk at nic.br<mailto:rubensk at nic.br>>; McGrady, Paul D. <PMcGrady at taftlaw.com<mailto:PMcGrady at taftlaw.com>>
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 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 “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<http://ebooking.com/>” or “hotel-booking.com<http://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<mailto:justine.chew at gmail.com>>
Sent: Wednesday, July 1, 2020 8:51 PM
To: McGrady, Paul D. <PMcGrady at taftlaw.com<mailto:PMcGrady at taftlaw.com>>
Cc: Aikman-Scalese, Anne <AAikman at lrrc.com<mailto:AAikman at lrrc.com>>; 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

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&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


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

_____________________________

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Lewis Roca Rothgerber Christie LLP

One South Church Avenue, Suite 2000

Tucson, Arizona 85701-1611

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






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