[Gnso-newgtld-wg] Client Alert - Supreme Court FindsBOOKING.COM Non-Generic And Capable Of Federal TrademarkRegistration
Kathy Kleiman
kathy at kathykleiman.com
Wed Jul 8 21:27:38 UTC 2020
Hi Paul,
>
Happily, the very words of the opinion ensure that this is not the
case. The fundamental principle -- that generics belong to all and
are not "registerable" to one competitor over another - is absolutely
upheld in the very opening paragraphs of Justice Ginsberg's opinion.
In the first line of the 2nd paragraph, Justice Ginsberg writes:
"A GENERIC NAME—THE NAME OF A CLASS OF PRODUCTS OR SERVICES—IS
INELIGIBLE FOR FEDERAL TRADEMARK REGISTRATION."
Let me share the entire paragraph:
"A GENERIC NAME—THE NAME OF A CLASS OF PRODUCTS OR SERVICES—IS
INELIGIBLE FOR FEDERAL TRADEMARK REGISTRATION. THE WORD “BOOKING,”
THE PARTIES DO NOT DISPUTE, IS GENERIC FOR HOTEL-RESERVATION SERVICES.
“BOOKING.COM” MUST ALSO BE GENERIC, THE PTO MAINTAINS, UNDER AN
ENCOMPASSING RULE THE PTO CURRENTLY URGES US TO ADOPT: THE COMBINATION
OF A GENERIC WORD AND “.COM” IS GENERIC."
So "booking" remains generic for hotel reservation services; trucking
remains generic for various trucking services; search remains generic
for various searching services. None of that is changed by this
decision. The bar against registrations of generics is, in fact,
upheld and further reinforced. Further, Justice Ginsberg points out
in the decision (as Anne does in her summary) that this case is a
narrow one: looking at the "combination" of a "generic word" and
".com".
As you know, Paul, the Supreme Court operates on narrow decisions
-- it must decide a case based on the specific facts before it and the
legal issues they raise. Chief Justice Roberts summarized this
position for graduating Georgetown Law School students in 2006 by
saying: "If it's not necessary to decide more to dispose of a case, in
my view, it's necessary not to decide more." (Associate Press, 2006)
So this is a + TLD case. Justice Ginsburg further reiterates the
concept that generics shall not be registered in the US Trademark
Office in their generic sense farther down in the case, including:
"See Restatement (Third) of Unfair Competition Sec. 15, p. 142 (1993);
Otokoyama Co. v. Wine of Japan Import, Inc., 175 F.3d 266, 270 (CA2
1999) ("[E]veryone may use [generic terms] to refer to the goods they
designate")." And there is more... but I will spare the non-lawyers
in the group :-).
If anything, this case reiterates everything we have been saying
about generic words-- that they must remain open to all in the given
business or industry. And that monopolization of a generic term by a
single competitor would be a utmost violation of fair competition
rules.
This case reinforces these basic principles. Thus monopolization of a
generic terms -- a .CLOUD, .SEARCH, .BOOK -- by a single competitor of
the business or industry class would raise a deep, deep concern for
"unfair competition" (as Justice Ginsburg notes above).
Best, Kathy
----- Original Message -----
From: "McGrady Paul D."
To:"alexander at schubert.berlin" , "gnso-newgtld-wg at icann.org"
Cc:
Sent:Wed, 8 Jul 2020 13:31:03 +0000
Subject:Re: [Gnso-newgtld-wg] Client Alert - Supreme Court Finds
BOOKING.COM Non-Generic And Capable Of Federal Trademark Registration
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 TLDs will somehow cause a competitive harm. Shreds.
Best,
Paul
FROM: Gnso-newgtld-wg ON BEHALF OF Alexander Schubert
SENT: Thursday, July 2, 2020 10:48 AM
TO: 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 [1]]
ON BEHALF OF McGrady, Paul D.
SENT: Donnerstag, 2. Juli 2020 18:13
TO: Justine Chew ; Rubens Kuhl
CC: gnso-newgtld-wg at icann.org [4]
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 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 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
SENT: Wednesday, July 1, 2020 11:44 PM
TO: Rubens Kuhl ; McGrady, Paul D.
CC: gnso-newgtld-wg at icann.org [8]
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 wrote:
Is there a position on generic trademarks in general from WIPO ?
Rubens
On 2 Jul 2020, at 00:05, Justine Chew 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. 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 [12]” 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 [13].” Rather,
the PTO fears that trademark protection for “Booking.com [14]”
could exclude or inhibit competitors from using the term
“booking” or adopting domain names like “ebooking.com [15]” or
“hotel-booking.com [16].” Brief for Petitioners 27–28. The
PTO’s objection, therefore, is not to exclusive use of
“Booking.com [17]” 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 [18]” would
not yield its holder a monopoly on the term “booking.” Booking.com
[19] concedes that “Booking.com [20]” would be a “weak” mark.
Tr. of Oral Arg. 66. See also _id._, at 42–43, 55. The mark is
descriptive, Booking.com [21] 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 [22] accepts that close variations are unlikely to
infringe. _Id._, at 66. And Booking.com [23] acknowledges that federal
registration of “Booking.com [24]” would not prevent competitors
from using the word “booking” to describe their own services.
_Id._, at 55.”
So, those against 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 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
SENT: Wednesday, July 1, 2020 8:51 PM
TO: McGrady, Paul D.
CC: Aikman-Scalese, Anne ; gnso-newgtld-wg at icann.org [28]
SUBJECT: Re: [Gnso-newgtld-wg] Client Alert - Supreme Court Finds
BOOKING.COM [29] 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. 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
[31]. 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
To receive regular COVID-19 updates from Taft, subscribe here
[32]. For additional resources, visit Taft's COVID-19 Resource
Toolkit [33].
This message may contain information that is attorney-client
privileged, attorney work product or otherwise confidential. If you
are not an intended recipient, use and disclosure of this message are
prohibited. If you received this transmission in error, please notify
the sender by reply e-mail and delete the message and any attachments.
FROM: Gnso-newgtld-wg ON BEHALF OF Aikman-Scalese, Anne
SENT: Tuesday, June 30, 2020 7:12 PM
TO: gnso-newgtld-wg at icann.org [35]
SUBJECT: [Gnso-newgtld-wg] FW: Client Alert - Supreme Court Finds
BOOKING.COM [36] 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 [37] 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 [38]
_____________________________
Lewis Roca Rothgerber Christie LLP
One South Church Avenue, Suite 2000
Tucson, Arizona 85701-1611
lrrc.com [39]
-------------------------
This message and any attachments are intended only for the use of the
individual or entity to which they are addressed. If the reader of
this message or an attachment is not the intended recipient or the
employee or agent responsible for delivering the message or attachment
to the intended recipient you are hereby notified that any
dissemination, distribution or copying of this message or any
attachment is strictly prohibited. If you have received this
communication in error, please notify us immediately by replying to
the sender. The information transmitted in this message and any
attachments may be privileged, is intended only for the personal and
confidential use of the intended recipients, and is covered by the
Electronic Communications Privacy Act, 18 U.S.C. §2510-2521.
_______________________________________________
Gnso-newgtld-wg mailing list
Gnso-newgtld-wg at icann.org [40]
https://mm.icann.org/mailman/listinfo/gnso-newgtld-wg [41]
_______________________________________________
By submitting your personal data, you consent to the processing of
your personal data for purposes of subscribing to this mailing list
accordance with the ICANN Privacy Policy
(https://www.icann.org/privacy/policy [42]) and the website Terms of
Service (https://www.icann.org/privacy/tos [43]). You can visit the
Mailman link above to change your membership status or configuration,
including unsubscribing, setting digest-style delivery or disabling
delivery altogether (e.g., for a vacation), and so on.
_______________________________________________
Gnso-newgtld-wg mailing list
Gnso-newgtld-wg at icann.org [44]
https://mm.icann.org/mailman/listinfo/gnso-newgtld-wg [45]
_______________________________________________
By submitting your personal data, you consent to the processing of
your personal data for purposes of subscribing to this mailing list
accordance with the ICANN Privacy Policy
(https://www.icann.org/privacy/policy [46]) and the website Terms of
Service (https://www.icann.org/privacy/tos [47]). You can visit the
Mailman link above to change your membership status or configuration,
including unsubscribing, setting digest-style delivery or disabling
delivery altogether (e.g., for a vacation), and so on.
_______________________________________________
Gnso-newgtld-wg mailing list
Gnso-newgtld-wg at icann.org [48]
https://mm.icann.org/mailman/listinfo/gnso-newgtld-wg [49]
_______________________________________________
By submitting your personal data, you consent to the processing of
your personal data for purposes of subscribing to this mailing list
accordance with the ICANN Privacy Policy
(https://www.icann.org/privacy/policy [50]) and the website Terms of
Service (https://www.icann.org/privacy/tos [51]). You can visit the
Mailman link above to change your membership status or configuration,
including unsubscribing, setting digest-style delivery or disabling
delivery altogether (e.g., for a vacation), and so on.
Links:
------
[1] mailto:gnso-newgtld-wg-bounces at icann.org
[2] mailto:justine.chew at gmail.com
[3] mailto:rubensk at nic.br
[4] mailto:gnso-newgtld-wg at icann.org
[5] mailto:justine.chew at gmail.com
[6] mailto:rubensk at nic.br
[7] mailto:PMcGrady at taftlaw.com
[8] mailto:gnso-newgtld-wg at icann.org
[9] mailto:rubensk at nic.br
[10] mailto:justine.chew at gmail.com
[11] mailto:PMcGrady at taftlaw.com
[12] http://booking.com/
[13] http://booking.com/
[14] http://booking.com/
[15] http://ebooking.com/
[16] http://hotel-booking.com/
[17] http://booking.com/
[18] http://booking.com/
[19] http://booking.com/
[20] http://booking.com/
[21] http://booking.com/
[22] http://booking.com/
[23] http://booking.com/
[24] http://booking.com/
[25] mailto:justine.chew at gmail.com
[26] mailto:PMcGrady at taftlaw.com
[27] mailto:AAikman at lrrccom
[28] mailto:gnso-newgtld-wg at icann.org
[29] http://booking.com/
[30] mailto:PMcGrady at taftlaw.com
[31]
https://www.law360.com/dockets/download/5efb47347da17405e86713cb?doc_url=https%3A%2F%2Fwww.supremecourt.gov%2Fopinions%2F19pdf%2F19-46_8n59.pdf&label=Opinion
[32] https://www.taftlaw.com/general/subscribe
[33]
https://www.taftlawcom/general/coronavirus-covid-19-resource-toolkit
[34] mailto:gnso-newgtld-wg-bounces at icann.org
[35] mailto:gnso-newgtld-wg at icann.org
[36] http://booking.com/
[37] http://booking.com/
[38] mailto:AAikman at lrrc.com
[39] http://lrrc.com/
[40] mailto:Gnso-newgtld-wg at icann.org
[41] https://mm.icann.org/mailman/listinfo/gnso-newgtld-wg
[42] https://www.icann.org/privacy/policy
[43] https://www.icann.org/privacy/tos
[44] mailto:Gnso-newgtld-wg at icann.org
[45] https://mm.icann.org/mailman/listinfo/gnso-newgtld-wg
[46] https://www.icann.org/privacy/policy
[47] https://www.icann.org/privacy/tos
[48] mailto:Gnso-newgtld-wg at icann.org
[49] https://mm.icann.org/mailman/listinfo/gnso-newgtld-wg
[50] https://www.icann.org/privacy/policy
[51] https://www.icann.org/privacy/tos
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://mm.icann.org/pipermail/gnso-newgtld-wg/attachments/20200708/6dec7821/attachment-0001.html>
More information about the Gnso-newgtld-wg
mailing list