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Posts Tagged: "generic trademarks"

Peloton Wants to Cancel the Mark SPINNING for Being Generic – the TTAB Has Rarely Granted Such a Petition

Peloton’s petitions to cancel Mad Dogg’s registered trademarks for SPIN and SPINNING (in Classes 41 and 28) for genericism ask the Trademark Trial and Appeal Board (TTAB) to do what it has rarely done before – cancel marks that were distinctive at the time of filing for losing distinctiveness due to the public’s overuse of the terms. While the TTAB has refused to register or cancel registered marks that were generic terms at the time the trademark applications were filed, the TTAB has rarely cancelled a mark that was distinctive when registered, but over time, became a generic term and lost its distinctiveness, as Peloton argues in its petitions. For example, “Kleenex” is often referenced when discussing generic brands, and while Kimberly-Clark Corporation has faced petitions for cancellation of its “Kleenex” mark, “Kleenex” has remained a registered mark of Kimberly-Clark Corporation since 1924.

Misguided: USPTO Examination Guide Misses the Mark on Booking.com

Last week, the U.S. Patent and Trademark Office (USPTO) released its long-awaited Examination Guide on so-called generic.coms – domain names comprised of generic elements along with a generic top-level domain (such “gTLDs” include .com, .net, .org, .biz and .info). The Guide (No. 3-20, entitled “Generic Terms after USPTO v. Booking.com”) provides needed guidance to trademark examiners on how to apply the U.S. Supreme Court’s decision in USPTO v. Booking.com B. V., 140 S. Ct. 2298 (2020); it also provides guidance to trademark applicants on the standards they can expect the USPTO to apply in considering whether their domain names are registrable as trademarks. Unfortunately, instead of faithfully applying the Supreme Court’s lesson about the importance of consumer perception in assessing whether a term functions as a trademark, the USPTO has relied on factors close to its discredited per se rule that will make it very difficult to register such marks.

The Supreme Court’s Holding that Generic Terms Can Be Trademarks Is Not Fair to Struggling Startups

At a time when small businesses are reeling, the Supreme Court decided to make life even more challenging for startups and mom and pop shops. The Court recently decided that a generic term combined with “.com” or “.net” could be registered as a federal trademark. If that sounds like no big deal to you, you have not thought it through. Based on the Court’s decision in United States Patent and Trademark Office et al. v. Booking.com, someone could register a trademark for autorepair.com. That would mean that Joe of Joe’s Auto Repair would have to get permission, and likely pay a licensing fee, to use the name Joe’s Auto Repair on his website and marketing materials. Multiply that by thousands of other generic business categories and the reality becomes clear.

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.

USPTO Urges Supreme Court to Reverse in Now-Delayed Booking.com Case

On March 13, the United States Patent and Trademark Office (USPTO) filed a reply brief urging the Supreme Court on to reverse a judgment of the U.S. Court of Appeals for the Fourth Circuit that held BOOKING.COM to be a registrable trademark. The case was set to be argued on Monday, March 23, but was postponed due to the coronavirus pandemic. Fifteen parties have filed amicus briefs in the case, most of those in support of Booking.com. In response to Booking.com’s brief of February 20, the USPTO primarily argued that, 1) Goodyear Co. v. Goodyear Rubber Co. remains good law and resolves the question presented in the present case, 2) Sound trademark policy supports the conclusion that adding a top-level domain, such as .com, to a generic term does not lead to a protectable trademark, and 3) Booking.com’s survey evidence does not provide a sound basis for treating the term “Booking.com” as a registrable trademark.

Federal Circuit says THE JOINT is merely descriptive without acquired distinctiveness

On February 28th, the Court of Appeals for the Federal Circuit (CAFC) affirmed the Trademark Trial and Appeal Board’s (TTAB) decision to refuse registration of two trademark applications belonging to JC Hospitality LLC (JC). Both applications sought to register the mark THE JOINT under different classes of services (Class 41 and Class 43). See In re JC Hospitality. The CAFC agreed with the TTAB that the marks were merely descriptive of JC’s services, and lacked any showing that the marks acquired distinctiveness as source identifiers.

Amici Back Booking.com in Supreme Court Case Against USPTO

As argument nears in the Supreme Court battle between Booking.com and the United States Patent and Trademark Office (USPTO), 12 parties have now filed amicus briefs in support of Booking.com. Among the amici are the Intellectual Property Owners Association (IPO), the International Trademark Association (INTA), and the Survey Scholars and Consultants (SSC).