Trademark

United States Supreme Court Allows Booking.com as a Federal Trademark

/ Michael McLean / Leave a comment

Walker, JeremyBy Jeremy T. Walker

In a decision issued on June 30, 2020,[1] the United States Supreme Court ruled that the domain name “Booking.com” was entitled to federal trademark protection.  With an 8-1 majority, the Court surprised many in the intellectual property community because the decision seemingly contradicts longstanding trademark jurisprudence that prohibits generic terms from receiving trademark protection.  Generic marks are those used to describe common terms or categories of goods such as cars, bikes, hats, etc.  Because these are terms that are commonly used, they are not afforded any trademark protection.  Otherwise, businesses could register these generic terms as trademarks and unfairly prevent competitors from using those terms to sell like products.

The United States Patent and Trademark Office (“USPTO”) previously rejected Booking.com as generic because the term “booking” is commonly used by hotels and related businesses for the process of reserving rooms.  The USPTO decided that a generic term remains generic despite the addition of the .com and use as a domain name.  But the Supreme Court relied on evidence that Booking.com was recognized by consumers as a unique source of services, and thus, was not truly generic.

Justice Breyer, the lone dissenting vote, asserted that Booking.com is generic and refers simply to an internet booking service.  He wrote:  “By making such terms eligible for trademark protection, I fear that today’s decision will lead to a proliferation of “generic.com” marks, granting their owners a monopoly over a zone of useful, easy-to-remember domains.”  Time will tell if Justice Breyer is correct.  On the other hand, many applaud the decision as necessary for those brand owners that have invested considerable resources in protecting their online brands, such as Hotels.com, Cars.com, etc.  Without any trademark protection available, these companies may not be able to effectively stop competitors from unfairly trading off the goodwill associated with their domain names.

 

[1] Patent and Trademark Office v. Booking.com B.V., No 19-46 (U.S. June 30, 2020)

Raymond Area Rotary Club Sparks Colorful Exchange

/ Michael McLean / Leave a comment

By Catherine S. Yao

The Raymond Area Rotary Club’s 4th annual Thunder Run is a 5K obstacle race to be held in Epping, NH, on May 20 this year.  But, just a few weeks from race day, the Rotary Club seems to have run into an obstacle of its own.

According to the New Hampshire Union Leader, an attorney for Tough Mudder, an endurance event series, has recently notified the Rotary Club that Tough Mudder is the owner of a trademark registration for the color orange “in connection with obstacle course mud runs” and has requested that the Rotary Club cease significant usage of such color on the Thunder Run website (http://thunderrunnh.com/).  It’s unclear how long the club has been using the color orange for the Thunder Run.

Rotary Club member Joe Pratt was not at a loss for words in his response, painting any potential litigation between the two sides as a scene of David and Goliath proportions.  Pratt further stated that the club might change the colors for next year’s race “if we have to.”  The full story may be read here: http://www.unionleader.com/courts/raymond-rotary-pushes-back-after-tough-mudder-lays-claim-to-the-color-orange-20170511.

U.S. trademark registrations (whether for color or otherwise) are always tied to particular goods and services.  Over the years, many companies have successfully obtained federal trademark/service mark registrations for their valued brand colors, such as Tiffany & Co.’s famous shade of blue and Owens Corning’s pink, the color of the company’s ubiquitous fiberglass insulation.  Colors are often an important aspect of a company’s brand identity, so it really comes as no surprise that a trademark registrant/owner would be protective of such intellectual property.

With the race only days away, we’ll be interested to see if and how the attorneys for Tough Mudder respond!

Know the Law: How Can I Start Protecting My Trademark?

/ Michael McLean / Leave a comment

By Catherine S. Yao

Q: I have a small business in New Hampshire and have been selling goods to customers in New Hampshire and Massachusetts for several years.  How can I start protecting my company’s trademark?

A:  It sounds like your company has been around for some time, so the mark has likely already started accumulating rights, at least in your geographic area.  Simply applying the mark to a product or using the mark to provide a product/service, creates “common law” trademark/service mark rights, which is the lowest level of trademark protection.  Notably, common law trademark rights are limited to the geographic area of use.  At this point, you can start using the “TM ” superscript (for trademarks not federally registered; “SM” for service marks not federally registered) to put others on notice of your mark.  The mark should be prominently displayed/used on the products themselves and/or the labels, tags, or packaging of the product.

To read my full article that was published in the Union Leader, please click here.