How To Select a Strong Trademark
The US Court of Appeals for the Fifth Circuit affirmed a senior party mark but found that the district court committed clear error in finding that a similar junior party mark was valid. The Fifth Circuit also found that the...more
The US Court of Appeals for the Second Circuit reversed a district court’s grant of preliminary injunction for abuse of discretion based on an erroneous evaluation of the strength of the “inherently descriptive” marks at...more
The US Court of Appeals for the Second Circuit affirmed a district court’s grant of summary judgement to a luxury-watchmaker defendant, holding that its use of a registered and incontestable trademarked term was fair use...more
The VIA Art Fund opposition and appeal decisions provide an important reminder for those seeking to enforce registered trade mark rights in the UK. While incorporating a figurative element to a descriptive mark can enhance...more
The U.S. Supreme Court recently confirmed that a “generic.com” term may be eligible for federal trademark registration in the U.S., in certain circumstances. We will review the relevant decisions, discuss the Canadian legal...more
In U.S. Patent and Trademark Office v. Booking.com B.V., the Supreme Court held that a term that combines a generic word with “.com” is not generic if consumers perceive the term to signify the source of a product and thus...more
The June 30th Supreme Court decision in Booking.com held that generic terms coupled with top-level domain names can be eligible for trademark registration. This decision is a win for brand owners as it reinforces how – in the...more
The U.S. Supreme Court has ruled that Booking.com B.V., the owner of the hotel-reservation website of the same name, is entitled to register the mark BOOKING.COM with the United States Patent and Trademark Office (“USPTO”)....more
In an 8-1 decision delivered by Justice Ginsburg, the Supreme Court declined to adopt a per se rule that combining a generic term with “.com” necessarily yields a generic mark ineligible for federal trademark registration....more
On June 30, the Supreme Court, in an 8-1 decision, issued a highly anticipated decision in United States Patent and Trademark Office et al. v. Booking.Com B.V. answering the question whether a trademark consisting of a...more
In the ruling handed down this week in United States Patent and Trademark Office v. Booking.com B.V., No. 19-46, the United States Supreme Court voted 8-1 to affirm lower court rulings holding the trademark applications for...more
The Supreme Court held June 30, 2020, in United States Patent and Trademark Office v. Booking.com B.V., that a generic term combined with a generic internet-domain suffix is not per se ineligible for trademark registration....more
Before the Supreme Court of the United States. On Writ of Certiorari from the United States Court of Appeals for the Fourth Circuit. Summary: A term styled "generic.com" is not necessarily generic and can be eligible for...more
The U.S. Supreme Court on June 30, 2020, decided U.S. Patent & Trademark Office v. Booking.com B.V., handing a win to Booking.com and holding that whether a generic term combined with a “.com” domain name results in a generic...more
In an 8-1 decision issued Tuesday, the Supreme Court declined to adopt the per se rule urged by the U.S. Patent and Trademark Office (USPTO) that when a generic term is combined with a domain name like “.com,” the resulting...more
How appropriate that the first-ever Supreme Court case to consider whether trademarks used on the internet can be registered should also be the first in which oral argument was conducted remotely. The issue in this historic...more
The Lanham Act (“Act”) makes it clear that generic terms cannot be registered as trademarks. But can an online business create a protectable trademark by adding a generic top-level domain (e.g., “.com”) to an otherwise...more
On Monday, May 4, 2020, for the first time in its 231-year history, the Supreme Court heard oral arguments through a telephone conference call, allowing the attorneys to present arguments while complying with shelter-in-place...more
On Monday, we listened in real time to the livestreamed Supreme Court oral arguments in the trademark registration case United States Patent and Trademark Office v. Booking.com B.V. Because of COVID-19, the arguments were...more
On May 4, 2020, the United States Supreme Court heard its first ever telephonic oral argument in its history. The case, styled United States Patent and Trademark Office v. Booking.com, B.V., addressed the issue of whether the...more
The Federal Circuit in In re JC Hospitality LLC recently affirmed the United States Patent and Trademark Office, Trademark Trial and Appeal Board’s refusal to register the service mark THE JOINT for a venue offering...more
The Supreme Court of the United States granted certiorari on a petition filed by the US Patent and Trademark Office (PTO) seeking to overturn a district court decision in favor of Booking.com. The PTO argues that the mark is...more
Breaking News! What happened? The United States Supreme Court recently announced that it has granted certiorari in United States Patent and Trademark Office v. Booking.com B.V., a case about whether the addition of...more
Last Friday, the U.S. Supreme Court granted the USPTO’s writ of certiorari to review traveling website company Booking.com’s trademark application for “booking.com”. The TMCA previously covered developments in this case here....more
There were many interesting trademark cases coming out of 2018, a few of which are discussed below. The scope of Canada’s anti-dilution remedy (section 22 of the Trademarks Act) is not limited to a defendant’s use of a...more