Intellectual Property Insights from Fishman Stewart
Volume 21, Issue 7

Did The U.S. Supreme Court Just Ratify Monopolies?

By Barbara L. Mandell

Everybody knows that a patent gives the owner a monopoly over the claimed invention. The monopoly is not, however, without limits; the invention enters the public domain twenty years from the application’s U.S. filing date. Many people also know that, unlike a patent, so long as a trademark is correctly used and maintained at the U.S. Patent & Trademark Office (“PTO”), a trademark registration lasts forever. The catch, however, is that one may not register a “brand” that is simply generic for the product or service. The reason is that fair competition requires that generic words reside in the public domain for everyone’s use. Thus, for example, no one can own a trademark registration for COFFEE, as a brand for coffee. (We hear that someone actually owns a trademark registration for APPLE, but not for a fruit). By the same token, no one can own the trademark BOOKING for the service of enabling travel bookings. Wait, what?

Yes, on June 30, 2020, the longstanding trademark rule preventing the registration of generic words was the subject of a well written Supreme Court majority opinion (Justice Ginsburg) and a compelling solo dissent (Justice Breyer) in the case titled, U.S.P.T.O. v. Booking.com B.V., 591 U.S., 140 S. Ct. 2298, 207 L.Ed. 2d 738 (June 30, 2020).

By way of background, Booking.com applied for a trademark registration for BOOKING.COM and, by refusing registration, the PTO followed the long-standing rule. Booking.com challenged the refusal, in a case that ultimately was taken up by the Supreme Court. In fact, due to the pandemic, the dispute was the first Supreme Court case to be argued over the phone, as opposed to in person.

Interestingly, the parties did not dispute that the word “booking,” is generic for travel reservation services. They diverged, however, as to whether “Booking.com” must also be generic, i.e., whether the combination of a generic word and “.com” must likewise be generic.

The majority rejected such an inflexible rule, stating, humorously, that if “Booking.com” were generic, “we might expect consumers to understand Travelocity—another such service—to be a “Booking.com.” Yet, given that consumers do not perceive Booking.com to be generic, but as the name of a business, in the majority’s view, such a perception was sufficient to ‘de-genericize’ the mark. This is a marked departure from Supreme Court precedent, in particular, Goodyear’s India Rubber Glover Mfg. Co. v. Goodyear Rubber Co., 128 U.S. 598 (1888), which held that a generic term modified by “Corp.” or like designation produces a generic composite barred from registration. Until now, consumer perception has been irrelevant.

In his dissent, Justice Breyer expressed his belief that the switch from a per se rule prohibiting registration of generic marks to one dependent on consumer perception was a dangerous one. His key problem is that permitting registration of a combination of two such generic terms “would grant the owner of the mark a monopoly, since a competitor could not describe his goods as what they are.” He asked:

“What is Booking.com? To answer this question, one need only consult the term itself. Respondent provides an online booking service. The company’s name informs the consumer of the basic nature of its business and nothing more. Therein lies the root of my disagreement with the majority.”

The immediate outcome of this decision may be a rush to purchase generic domain names relevant to one’s business (e.g., wine.com, wine.org, wine.net) and then file trademark applications for those domain names. The long-term outcome may be a host of government-sanctioned monopolies of what were once considered unprotectable generic terms for unlimited duration, with legal barriers to entry fashioned by trademark registrations and associated rights. Trademark rights may ultimately trump patent rights. We shall see.

Brexit’s Influence on EU and UK Trademark Applications and Registrations

By Lily S. Barash

On January 30, 2020, the UK officially withdrew its membership from the EU, an event colloquially termed “Brexit”. In the eleven-month interval following, the UK and EU negotiated a new relationship which became effective January 1, 2021. Politicians and economists everywhere have tuned in, and trademark owners and practitioners should follow suit. Trademark protection in the EU and UK are affected by Brexit in a few pivotal ways.

EU trademark registrations as of December 31, 2020 were automatically cloned identical UK trademark registrations. These cloned UK registrations fall directly under the UK Intellectual Property Office’s jurisdiction and require separate maintenance from their original EU registrations.

However, pending EU applications as of December 31, 2020 did not receive automatic UK clones. Rather, pending EU applications as of such date necessitate separate equivalent applications to be filed in the UK, which will retain the original EU filing dates if the UK applications are filed by September 30, 2021.

Finally, due to Brexit, as of January 1, 2021, those seeking EU and UK registration protection for marks not already the subject of EU or UK applications or registrations must file separately in the EU and UK.

Introducing Kristyn Webb

Please join us in welcoming our new attorney, Kristyn C. Webb. Kristyn advises clients on various aspects of intellectual property law. Her practice includes litigation of patent, trademark, trade secret, and copyright matters and all facets of trademark and copyright portfolio management, including trademark clearance searches, U.S. and foreign trademark prosecution and copyright registration.

Before joining Fishman Stewart, Kristyn clerked for Justice Kurtis T. Wilder at the Michigan Supreme Court and for Judge Michael J. Riordan at the Michigan Court of Appeals. After graduating magna cum laude from Loyola New Orleans College of Law, she became a member of the Louisiana State Bar and the State Bar of Michigan. Her published academic articles include, “Issue Preclusion Prohibits a ‘Second Bite of the Apple’ But Offers Opponent a Third Bite Instead,” which was awarded the 2016 Ladas Memorial Award by the International Trademark Association. Additionally, her comment titled, “Products Liability and Autonomous Vehicles: Who’s Driving Whom?” won first prize in the 2017 Klau Writing Competition and is published in the Richmond Journal of Law and Technology. These papers were also recognized by the Loyola Law Review as the 2016-2017 Best Casenote and Best Comment—marking the only time that a single student has won both awards.

We are excited to have Kristyn on our team and our clients can expect another strong practitioner to represent their best interests.

IDENTIFYING, SECURING AND ADVANCING CREATIVITY®