Posts in Trademark

The Consumer is King: High Court Sides with Booking.com, Rejecting Per Se Test for Generic.Com Trademarks

The U.S. Supreme Court has sided with Booking.com, ruling that a generic term paired with .com “is a generic name for a class of goods or services only if the term has that meaning to consumers.” The opinion was delivered by Justice Ginsburg and joined by eight members of the Court, with Justice Breyer dissenting and Justice Sotomayor filing a separate concurring opinion. In the Booking.com case, the U.S. Patent and Trademark Office (USPTO) was urging the High Court to reverse a judgment of the U.S. Court of Appeals for the Fourth Circuit that held BOOKING.COM to be a registrable trademark. But the Supreme Court ultimately found that the genericness analysis should turn on consumer perception, rather than a “per se rule” against trademark protection for a generic.com term.

IPR Center Director Steve Francis: How the National IPR Center is Helping to Combat IP Theft During a Global Pandemic

For over a decade, the National Intellectual Property Rights Coordination Center (IPR) has been at the forefront of the United States government’s response to combating global intellectual property (IP) theft and enforcement of its international trade laws. The IPR Center brings together over 25 global partners, including government and law enforcement agencies focused on IP enforcement. Steven Francis is the IPR Center Director and is also the Assistant Director for Global Trade Investigations at Homeland Security Investigations, with over 22 years of federal law enforcement experience. This month, I had the opportunity to interview Francis about the work of the IPR Center, particularly during Covid-19, and how the center is partnering with the stakeholder community through initiatives such as Operation Stolen Promise.  

Full Senate Judiciary Committee Addresses COVID-19 Related Fraud

On June 9, the full Senate Judiciary Committee held a hearing titled “COVID-19 Fraud: Law Enforcement’s Response to Those Exploiting the Pandemic.”  The hearing, which was led by Chairman Sen. Lindsey Graham, R-S.C., included testimony by William Hughes, Associate Deputy Attorney General United States Department of Justice, The Honorable Craig Carpenito, United States Attorney District of New Jersey, Calvin Shivers, Assistant Director Criminal Investigative Division Federal Bureau of Investigation, and Michael D’Ambrosio, Assistant Director United States Secret Service Department of Homeland Security. Following an acknowledgment of the tragic death of George Floyd by each of the witnesses, the testimony focused on the response to fraud that has resulted from the COVID-19 pandemic, including the sale of fraudulent personal protective equipment (PPE) and cyber-enabled fraud. In general, Hughes focused primarily on the Department of Justice’s response to criminal conduct relating to the COVID-19 pandemic, Carpenito focused on hoarding and price gouging, Shivers focused on fraud schemes and illicit finance activities that seek to exploit the COVID-19 pandemic, and D’Ambrosio focused on the U.S. Secret Service’s work to counter cyber and financial crimes exploiting the pandemic.

The One China Supreme Court Decision that Could Complicate the World’s Supply Chain

For months now, the news has been plastered with updates on COVID-19, the novel coronavirus that has upended lives and trickled into near every facet of the modern experience. Across the political aisle, consumers and producers are questioning the current level of reliance on Chinese production for drugs, ventilators, and masks. Despite these concerns, most manufacturing alternatives, including India, are still working to reestablish normalcy, making China even more indispensable. Realistically, China is and will remain the dominant player for outsourcing production for at least the next five years. Now that Chinese factories are producing close to their full capacity, foreign investors should refocus their attention to newfound legal issues that may complicate the supply chain.

CAFC Says District Court Abused Its Discretion in Granting Attorney’s Fees Under Sections 285 and 1117(a)

The U.S. Court of Appeals for the Federal Circuit today reversed a district court decision awarding attorney’s fees to Luv n’ Care Ltd. (LNC) against Munchkin, Inc. The Federal Circuit held that the district court abused its discretion in granting LNC’s motion for attorney’s fees as “LNC’s fee motion insufficiently presented the required facts and analysis needed to establish that Munchkin’s patent, trademark, and trade dress infringement claims were so substantively meritless to render the case exceptional.” The Court also pointed to its recent ruling in Amneal Pharmaceuticals v. Almirall regarding attorney’s fees with respect to Patent Trial and Appeal Board (PTAB) proceedings, though it did not reach that issue in the present case. The opinion was authored by Judge Chen.

WIPO Revises and Expands AI Policy Issues

The World Intellectual Property Organization (WIPO) has published a Revised Issue Paper on Artificial Intelligence and IP Policy. The Revised Issues Paper updates the Draft Issues Paper published in December 2019 with the addition of a glossary and sections on trademarks and trade secrets, and an expansion of the sections covering patents, copyright, infringement and deep fakes. As reported by IPWatchdog in February, WIPO received more than 250 submissions from IP offices, companies, organizations and individuals in response to the draft paper. These have been taken into account in the Revised Issues Paper, which lists a large number of questions (many of them not included in the draft paper) under 16 separate issues.