Can Booking.com Trademark Its Company Name? How Will the U.S. Supreme Court Resolve Whether a Generic Term Plus a Top-Level Domain Is Protectable?

The legal battle between Booking.com BV and the U.S. Patent and Trademark Office (USPTO) began more than five years ago and concerns whether the online hotel booking company can secure a trademark registration for its name. After filing for trademark protection, Booking.com commenced a federal lawsuit in connection with the USPTO’s refusal to issue a trademark on the grounds that “BOOKING.COM” was too generic. Thereafter, the U.S. District Court for the Eastern District of Virginia held that the company’s “BOOKING.COM” trademarks could be registrable as descriptive trademarks that have acquired distinctiveness. The district court reasoned that the trademark “BOOKING.COM” had the potential to be non-generic when the public understood the trademark in its totality to refer to Booking.com’s brand. Significantly, the district court reviewed Booking.com’s survey evidence to conclude that the consuming public did not associate “BOOKING.COM” with general online hotel booking services. Rather, the district court noted that survey evidence indicated that participants associated the trademark, which included the top-level domain “.COM” with the specific source of the services.

The U.S. Court of Appeals for the Fourth Circuit affirmed the lower court’s ruling on this issue. The appellate court wrote that “when [“.COM”] is combined with [a second term], even a generic [second term], the resulting composite may be non-generic where evidence demonstrates that the mark’s primary significance to the public as a whole is the source, not the product.”

The USPTO petitioned the U.S. Supreme Court to reverse the Fourth Circuit’s affirmance that “BOOKING.COM” can be a valid mark because customers may identify the combined term as a brand name. Namely, the USPTO claimed that the Fourth Circuit’s decision conflicted with earlier Courts of Appeals decisions, which held that the addition of a descriptive component alone to a generic term does not transform the generic term into a registrable trademark.[1] In November 2019, the Supreme Court granted certiorari on the issue presented and will soon decide whether adding a top-level domain such as “.COM” to a generic name can transform the resulting combination into a federally protectable trademark. Continue Reading

Who Is Holding the Bag: How Will the Supreme Court Resolve the Circuit Split on Recovery of Profits in Trademark Cases?

Two weeks from now, on January 14, 2020, the Supreme Court will hear oral argument in Romag Fasteners, Inc. v. Fossil, Inc. on the long-standing circuit split over whether willful infringement is a necessary precondition for an award of profits in a Section 43(a) trademark infringement case.

Under the Lanham Act, a victorious plaintiff in a trademark infringement case may be entitled to an election of either a monetary award of its damages or a disgorgement of the infringer’s profits, subject to equitable principles. 15 U.S.C. §1117(a). However, monetary relief is not a given, and injunctive relief is awarded far more commonly. The remedy is to make the plaintiff whole. While a disgorgement of profits is available, it is not intended to be punitive – in theory it serves as a proxy for actual damages, in a case where actual damages are difficult to prove, or alternatively as a means of preventing unjust enrichment or deterring future infringement.

More than 25 years ago, the Second Circuit, in George Basch Co. Inc. v. Blue Coral, Inc., 986 F.2d 1532 (2d Cir. 1992), adopted a per se willfulness standard in keeping with the then current Restatement of Unfair Competition, as necessary to maintain these “principles of equity.” A finding of willfulness would avoid the risk of a windfall beyond what would be considered appropriate damages. This precondition of willfulness for a disgorgement of profits has been long-standing in cases arising in the Second, Eighth, Ninth, Tenth and D.C. Circuits. Continue Reading

POP Addresses IPR Printed Publication Standard

The Precedential Opinion Panel (POP) of the Patent Trials and Appeals Board (PTAB) recently answered the question, “What is required for a petitioner to establish that an asserted reference qualifies as a ‘printed publication’ at the institution stage?” According to the POP, “[f]or institution of an inter partes review, a petitioner must establish a reasonable likelihood that a reference is a printed publication.” Hulu, LLC. v. Sound View Innovations, LLC (IPR2018-01039), Paper 29 dated December 20, 2019, at 2.

In Hulu, LLC. v. Sound View Innovations, LLC, petitioner Hulu alleged that claims of patent owner Sound View’s U.S. Patent No. 5,806,062 (the ’062 patent) are invalid as obvious over Dougherty, a textbook that, according to Hulu, was publicly available prior to the 1995 filing of the application that resulted in the ’062 patent. Hulu’s obviousness argument relied upon a copy of Dougherty bearing a copyright date of 1990, a printing date of November 1992 and an ISBN date of August 1994 (Dougherty 1994), which Hulu submitted as an exhibit in its petition. Hulu supported the public accessibility of Dougherty, however, by submitting the table of contents of a copy of Dougherty bearing a copyright date of 1991, a printing date of March 1991 and an ISBN date of January 1992 (Dougherty 1992). The Dougherty 1992 exhibit was date-stamped by the Cornell University Library and was accompanied by an affidavit from the librarian at the Cornell University Library, which stated that Dougherty was indexed and available to the public on September 16, 1992. Continue Reading

Settlement Offers Can Be Used Against You (in a Patent Case)

Rule 408 of the Federal Rules of Evidence protects settlement communications.  The language of the rule is clear.  Such communications are “not admissible . . . to prove or disprove the validity . . . of a disputed claim.”  However, there are exceptions to this rule.  And in a recent patent infringement case, the Federal Circuit used one of these exceptions when it affirmed an award of attorney fees based in part on the amount of money offered in settlement. Continue Reading

Hussein Akhavannik, Fabian Koenigbauer Article Examines Lessons to Learned from “Pharma Tech” Decision

Partner Hussein Akhavannik and Counsel Fabian Koenigbauer authored an article published Dec. 19, 2019, by IAM.com. The article, “Federal Circuit Ruling Marks Out Dangers of Doctrine of Equivalents Estoppel,” discusses how the Federal Circuit’s ruling in Pharma Tech Solutions Inc. v. Lifescan Inc. underscores the importance of carefully crafting claim amendments and arguments during prosecution to avoid being precluded from enforcing a patent under the doctrine of equivalents (DOE).

Read the article.

Can the USPTO Recover the Salaries of its Legal Personnel in Challenges to Adverse Decisions?

Can the U.S. Patent and Trademark Office (USPTO) recover the salaries of its legal personnel in challenges to adverse decisions? Not surprisingly, the answer was a quick and unanimous no. More specifically, on Wednesday, Dec. 11, the U.S. Supreme Court concluded that the USPTO cannot recover the pro rata salaries of its legal personnel.

The case relates to a NantKwest Inc. patent application directed to a method for treating cancer, which was denied by the USPTO. Thereafter, NantKwest filed a complaint against the USPTO Director in the Eastern District of Virginia under Section 145. Subsequently, the Eastern District of Virginia granted summary judgment to the USPTO; thereafter, the Federal Circuit affirmed.

The USPTO then moved for reimbursement of expenses, including the pro rata salaries of USPTO attorneys and paralegals who worked on the case.

The question presented in this case was whether such “expenses” included the salaries of attorney and paralegal employees of the USPTO. The District Court denied the USPTO motion, and an en banc Federal Circuit affirmed.

The U.S. Supreme Court – relying on the “American Rule,” the plain text of Section 145 (including the term “expenses”) and the Patent Act’s history – concluded that the USPTO cannot recover pro rata salaries of its legal personnel under Section 145 actions.

It is noted that the Lanham Act contains similar provisions, and accordingly, the USPTO will no longer be able to seek reimbursement of USPTO attorneys’ and paralegals’ salaries in trademark cases. The decision is seen as beneficial for all intellectual property owners, and especially intellectual property owners that are less affluent. The brief and unanimous opinion was released less than 10 weeks after argument. Moreover, only one of the numerous amicus briefs urged the court to strike down the rule.

IPO’s “Gender Diversity in Innovation Toolkit” Aims to Address Disparities in Inventorship

While women are awarded 53% of PhDs, they accounted for only 12% of named inventors on U.S. patents granted in 2016. Fewer than 30% of Patent Cooperation Treaty applications name a woman inventor. After the U.S. Patent and Trademark Office issued a report, “Progress and Potential: A Profile of Women Inventors on U.S. Patents” in February 2019, the Intellectual Property Owners Association’s Women in IP committee formed a working group to address the issue of gender disparity in innovation. The result of the group’s effort is the “Gender Diversity in Innovation Toolkit” (“Toolkit”), a publicly available document offering proposed solutions to address the gender gap in inventorship.

The Toolkit is aimed at any organization, including corporations, universities and law firms, engaged in innovating new technologies and protecting the resulting intellectual property. It proposes an iterative four-step process: (1) increasing awareness of the disparity and supporting employees in a position to change it; (2) discovering root causes, such as implicit bias; (3) developing short- and long-term programs to address the root causes of the disparity; and (4) launching and monitoring programs to increase gender diversity. It is contemplated that successful results will be shared among organizations. The Toolkit offers detailed suggestions for each of the four steps to be implemented within an organization, as well as a complementary section directed to outside counsel to help clients adopt and use the Toolkit.

As detailed in the “Progress and Potential” report, the proportion of women inventors is lower than women’s participation in STEM education and employment, indicating that there is not merely a “pipeline” problem, but rather one of institutional issues requiring action. At the current rate of increasing women inventorship, it will take until the end of the 21st century to achieve gender parity in named inventorship on U.S. patents. The Toolkit will help organizations recognize women’s contributions to patentable technology, so that parity might instead be reached in our lifetime.

 

The theory of “trademark neutralization.” What is it and will it likely be adopted in the US?

Have you heard of the theory of “trademark neutralization?” It was developed by the European Union (EU) General Court and the European Union Court of Justice (“CJEU”) in 2006 (Case No. C-361/04 (ECJ Jan. 12, 2005)) holding PICASSO/PICARO not confusingly similar and was followed in Case C-206/04 (ECJ Mar. 23 2006) holding SIR/ZIRH not confusingly similar. Essentially, the theory is that aural similarity of trademarks may be neutralized by obvious visual or conceptual differences. When the theory is applied, a finding of non-confusing similarity of marks arises. Might the theory be adopted in the U.S.?

Background of the theory and the lack of uniform application in the European Union.

Despite the EU’s harmonization of European trademark law, national courts do not necessarily apply the theory of trademark neutralization. For example, in a decision dated April 21, 2009 (Case 24 W (pat) 37/08), the marks XXERO and ZERO were found confusingly similar by the German Federal Patent Court because of their aural similarity. In that case, the court followed the caselaw of the German Federal Supreme Court, which permits a finding of a likelihood of confusion on either aural, visual or conceptual similarity alone. In a November 8, 2011 decision, the German Patent Court also found EAGLE and EAGLET (in stylized form) confusingly similar (Case 27 W (pat) 602/10), holding the marks were very similar aurally and somewhat conceptually similar. The court also warned that excessive extension of neutralization of similarities would restrict the protection of trademarks. Continue Reading

Five Counterfeit Hotspots in New York that Brand Owners Must Be Aware Of

The issue of fake goods in New York City has been widely covered for a number of years. For example, earlier this year, the South China Morning Post looked at the “rising counterfeit market” in New York, especially around luxury goods. It pointed out a recent investigation from the US government that led to the seizure of $450 million worth of counterfeit luxury goods in the Big Apple, with 33 suspects arrested.

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Kanye West Denied Trademark Registration for ‘SUNDAY SERVICE’ Mark

Global rap icon Kanye West is one of the most visible and controversial personalities on the contemporary scene. He has long been recognized as one of the best rap creators and performers of his generation. More recently, his prominence has transcended the world of music with his highly publicized embrace of President Donald Trump, making him a lightning rod for both acclaim and opprobrium from the supporters and opponents of our controversial president.

Now, the spotlight shines even brighter on Kanye West as a result of his proclamation that he has become a convert to Christianity. He has announced that henceforth, his musical career shall be dedicated entirely to his mission of spreading the Word of his faith, which brings us to the subject at hand: Kanye performed on Easter Sunday this year, with his gospel singers and other celebrities, at the Coachella music festival in California. At that event, he debuted his line of “church clothing” – dresses, jackets, scarves, footwear, headwear, etc. – under the brand SUNDAY SERVICE. In July, his company applied for U.S. trademark registration of the SUNDAY SERVICE mark in International Class 25 for these and related articles of apparel.[i] No other types or categories of goods or services are covered by the application. Continue Reading

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