Trademark

Booking.com

(Bill Hilton, a partner at my firm, co-authored this post with me.)

On June 30, 2020, the U.S. Supreme Court held that the addition of “.com” to a generic term has the potential to create a protectable trademark. In so ruling the Court rejected the United States Patent and Trademark Office’s “nearly per se rule” that when a generic term is combined with a generic top-level domain the resulting combination is generic. The background of this Booking.com case is discussed in detail in an earlier post, Supreme Court Will Decide if “generic.com” Trademarks Are Entitled to Trademark Protection.

A few days after this case was decided Kevin Kickstarter scheduled a meeting with his long-time attorney, Mr. Jaggers, to discuss how he might be able to profit from this decision. Regular readers of this blog may recall Kevin and Mr. Jaggers’ past appearances.

Kevin has little regard for the attorney-client privilege, and once again he recorded his meeting with Mr.… Read the full article

Supreme Court Will Decide if “generic.com” Trademarks Are Entitled to Trademark Protection

Have you ever used the website booking.com to make a hotel reservation? If you are familiar with this site and I asked whether you thought BOOKING.COM is a brand name or a generic term, what would you say? Odds are you’d say it is a brand name – 75% of people surveyed thought so.

The United States Patent and Trademark Office (the USPTO) doesn’t challenge those survey results. However, it doesn’t think BOOKING.COM is entitled to trademark registration. It concluded that BOOKING is generic for an online hotel reservation service, and adding a top-level domain name (“.com” in this case) doesn’t change that, irrespective of survey results showing that consumers view it as a brand.

The owner of the trademark, Booking.com B.V. (“Booking”), appealed, and after grinding its way through the USPTO and the courts for eight years this dispute has arrived at the U.S. Supreme Court.

The issue presented to the Court is this: you can’t register (or enforce) a generic trademark.Read the full article

Supreme Court To Decide Whether Trademark License Can Be Rejected In Bankruptcy

The U.S. Supreme Court decides very few intellectual property cases. And, it accepts review of few cases from the First Circuit Court of Appeals in Boston (my circuit). So, when the Supreme Court accepts an IP case appealing a decision from the First Circuit, as it has now, I pay attention.

The case under appeal involves a narrow but important legal issue that is of interest to both the intellectual property licensing and bankruptcy communities. Here is a brief summary of what’s at issue.

The decision on appeal is Mission Product Holdings Inc. v. Tempnology LLC (1st Cir. January 12, 2018), and the issue is a mashup of trademark and bankruptcy law.

When a company files for protection under Chapter 11 of the Bankruptcy Code, the trustee or the debtor-in-possession (the “debtor”) may secure court approval to “reject” any executory contracts to which the debtor is a party. An example would be a distribution agreement for a specific term (say five years) that has not run its course.… Read the full article

Federal Circuit: Disparagement Provision of Trademark Statute is Unconstitutional

The Court of Appeals for the Federal Circuit (“Federal Circuit”) has issued a typically fractured en banc decision (12 judges, 5 opinions) holding that the 70 year old disparagement provision of § 2(a) of the Lanham Act (the federal trademark statute) is unconstitutional under the First Amendment.

This law states, in relevant part:

No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it—

(a) Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute …. (emphasis added)

The background of this decision is straightforward.  Simon Shiao Tam named his band, “The Slants”, and attempted to register it as a trademark.  Tam asserted that he had chosen this name to make a statement about racial and cultural issues in the United States, and by chosing this name his band sought to “reclaim” or “take ownership” of Asian stereotypes.… Read the full article