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Appeals Acquired Distinctiveness Lanham Act

McDermott Will & Emery

What Makes a Trademark Case “Exceptional” in the Fifth Circuit?

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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

McDermott Will & Emery

Big Little Lies: Guidelines for Challenging Trademark Acquired Distinctiveness Claims

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For the second time, the US Court of Appeals for the Federal Circuit examined the standard for demonstrating fraud in a party’s claim of a trademark’s acquired distinctiveness for purposes of registration under Section 2(f)...more

Jones Day

JONES DAY TALKS®: Women in IP: 2020 in Review and a Look Toward 2021

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Jones Day's Meredith Wilkes and Anna Raimer discuss 2020's most significant developments in trademark law and preview what's to come in 2021, including possible progress in Washington on the highly anticipated Trademark...more

McDermott Will & Emery

PTO Exam Guide: Post Booking.com, Generic.com Terms Still Face Uphill Battle for Registration

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Addressing the Supreme Court of the United States’ ruling in USPTO v. Booking.com B.V., the US Patent and Trademark Office (PTO) recently issued guidance on the examining procedures for “generic.com terms.” (Examination Guide...more

Manatt, Phelps & Phillips, LLP

Supreme Court: Generic Word Combined With ‘.com’ Held Trademark Eligible

In U.S. Patent & Trademark Office v. Booking.com B.V., the Supreme Court held, in an 8-1 decision, that a generic word combined with the top-level domain “.com” can be a federally protectable trademark if it has secondary...more

International Lawyers Network

Generic.com — Registrable In Canada?

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

Katten Muchin Rosenman LLP

Kattison Avenue | Issue 3 - Summer 2020

Gambling With Graffiti: Using Street Art on Goods or in Advertising Comes With Significant Risks - Graffiti. Guerrilla Art. Street Art. Aerosol Art. Tagging. It appears on the sides of buildings, highway signs, boundary...more

Latham & Watkins LLP

Supreme Court: “Generic.com” Trademarks May Be Registered if Consumers Do Not Perceive Them as Generic

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The decision expands the availability of trademark protection for domain names and limits the number of terms deemed unprotectable because they are generic. Key Points: ..The addition of the .com top-level domain to an...more

Cranfill Sumner LLP

Supreme Court Rules that a Generic Term Combined with “.com” is Protectable

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Recently the Supreme Court affirmed registration on the principal register for what appeared to be a generic term. In United States Patent & Trademark Office v. Booking.com B. V., 140 S. Ct. 2298 (2020), the Court affirmed...more

Locke Lord LLP

Supreme Court Holds that Booking.com Isn’t Generic

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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

Kilpatrick

Strategies for Cultivating Protectable Rights in, and Registering, Generic.com Marks After United States Patent and Trademark...

Kilpatrick on

On June 30, 2020, the U.S. Supreme Court affirmed the potential registrability in the U.S. Patent and Trademark Office (“PTO”) of a claimed trademark or service mark consisting of a generic word and a generic top-level domain...more

Faegre Drinker Biddle & Reath LLP

The Future of the “Generic.com” Trademark

The basic premise that a generic term is un-registrable is, at first glance, uncontroversial. If a key purpose of a trademark is to identify a particular source of goods or services, then it stands to reason that one cannot...more

Goulston & Storrs PC

Supreme Court Affirms "Booking.com" Trademark

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On June 30, 2020, The Supreme Court of the United States issued its opinion in United States Patent and Trademark Office v. Booking.com B. V., holding that a mark consisting of a generic term combined with “.com” is not...more

McDermott Will & Emery

Supreme Court: “Booking.com” Can Be Registered as Trademark

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By an 8-1 vote, the Supreme Court rejected a per se rule by the US Patent and Trademark Office (PTO) that a generic word followed by “.com” is necessarily generic and therefore ineligible for trademark protection. U.S. Patent...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

MarkIt to Market® - June 2020: Breaking News: Booking.com Prevails in Genericness Challenge

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

Jones Day

The Sum Is Greater Than Its Parts: U.S. Supreme Court Holds Booking.com Is a Protectable Trademark

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A generic.com term may be eligible for trademark protection if consumers perceive the term as a source identifier. The combination of a generic word plus ".com" does not necessarily equal a generic term. Instead, in an 8–1...more

Bass, Berry & Sims PLC

Impact of Supreme Court Trademark Decision in Booking.com Case

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Supreme Court Decision in Booking.com Case - Booking.com, owner of the popular travel booking website, previously applied to register four trademarks with the U.S. Patent and Trademark Office (USPTO) in connection with its...more

Jaburg Wilk

Generic.Nope: Supreme Court Deems BOOKING.COM a Distinctive, Registrable Mark

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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

Foley Hoag LLP - Making Your Mark

Booking.whocares: SCOTUS Issues a Headline-Making Trademark Decision… But Does It Really Matter?

On June 30, amidst the traditional flurry of end-of-term opinions, the Supreme Court issued its decision in the first case to have been argued before it via teleconference, United States Patent and Trademark Office et al. v....more

Foster Garvey PC

OTA & Travel Distribution Update: Radisson partners with Hotelbeds; Expedia offers more details on its partner recovery program

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Perhaps it was Canada Day or the Fourth of July holiday weekend, but last week was relatively quiet in the distribution world. Enjoy....more

McDermott Will & Emery

US Supreme Court Rules "Booking.com" Can Be Registered as a Trademark

On June 30, 2020, by an 8–1 vote, the US Supreme Court rejected a ¬per se rule by the US Patent and Trademark Office that a generic word followed by “.com” is necessarily generic and therefore ineligible for trademark...more

Blank Rome LLP

What’s It to You?: SCOTUS Looks to Consumers in Examining “Generic.com” Trademarks

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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

Seyfarth Shaw LLP

Isn’t It Ironic? SCOTUS Rules BOOKING.COM Eligible for Trademark Registration

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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

Vedder Price

Supreme Court Rules That "Generic.com" Trademarks Are Eligible for Federal Registration

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In its recent decision in USPTO v. Booking.com, the U.S. Supreme Court declined to adopt a sweeping rule that would automatically render “generic.com” marks unregistrable. This opens the door for future applicants to apply...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

MarkIt to Market® - June 2020

The June 2020 issue of Sterne Kessler's MarkIt to Market® newsletter leads with breaking news of today's Supreme Court's decision in favor of Booking.com. Other topics discussed include copyright applications covering a...more

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