In 2019, the world of trademark law was abuzz about the Supreme Court victory for a Los Angeles clothing designer whose win challenged the definition of the Lanham Act’s “immoral or scandalous” restrictions. Have we seen something just as interesting happen to trademark law in 2020? Yes, we have!
Let’s look at two trademark cases that went all the way to the highest US court this year.
USPTO v. Booking.com:
Adding “.com” to a generic term can be enough to create an original mark in certain instances.
On June 30, The Supreme Court ruled against the USPTO in a case that considered what can and cannot remedy a generic term. The USPTO had refused to register “Booking.com” as a trademark for the online hotel reservation company. In its view, the combination of a generic word and “.com” was not enough to create a non-generic term. Ordinarily, a generic name is ineligible for federal trademark registration and protection. The Court ruled that the mark must be considered as a whole, not its parts.
The USPTO had also asked the Supreme Court to adopt a “bright-line rule” arguing that adding “.com” to a generic term should not be enough to create a protected mark. However, the Court adopted a more flexible approach based on consumer perception. Did consumers see “Booking.com” as a generic term or as a brand? This is where Booking.com really did their homework. The company submitted a consumer survey that showed 75% recognized “Booking.com” as a brand. Accordingly, the Court found that since “Booking.com” was not a generic name to consumers, it was not generic. It will be interesting to see if the USPTO will find future cases of “generic name” + “.com” eligible for registration and protection.
Romag Fasteners v. Fossil:
Does being an “Innocent” or “Willful” infringer of a trademark make a difference in being entitled to a monetary award?
In April, the Court clarified what a plaintiff in a trademark infringement suit is required to prove to be granted a monetary award. The companies had an agreement to use Romag’s fasteners in Fossil’s leather goods. Romag later discovered that Chinese factories producing Fossil products were using counterfeit Romag fasteners. They sued Fossil for trademark infringement.
The district court denied Romag’s request for an award because the jury did not find that Fossil had acted willfully. Other circuits also required Romag to prove Fossil willfully infringed on the trademark to receive a monetary award. It was shown that Fossil was an “innocent” infringer because they did not know that the fasteners were counterfeit.
However, the Court disagreed and ruled that mens rea or the mental state of the infringer is an important consideration, but not an absolute precondition. Romag alleged and was able to prove a violation of § 1125(a), a provision establishing a cause of action for the false or misleading use of trademarks.
It will be interesting to see what happens in future cases where the lower courts consider the actions of “innocent” and “willful” infringers.
The bottom line
I have been practicing Intellectual Property Law exclusively since 1996 and will actively work to help identify, register, and police inventions, brands, and creations. Even if you’ve worked with an intellectual property attorney before, or have tried to get what you need from online services, you’ll find working with me is quite different.
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