Booking.com and Implications for Domain-Name Trademarks: Distinctiveness, Consumer Surveys, Functionality
Course Details
- smart_display Format
On-Demand
- signal_cellular_alt Difficulty Level
- work Practice Area
Trademark and Copyright
- event Date
Tuesday, September 29, 2020
- schedule Time
1:00 p.m. ET./10:00 a.m. PT
- timer Program Length
90 minutes
-
This 90-minute webinar is eligible in most states for 1.5 CLE credits.
This CLE course will guide trademark counsel through the Supreme Court's June 30, 2020 decision in Booking.com and its implications on brand management strategy related to domain names containing generic terms, including trademark prosecution and trademark enforcement. The panel will address the potential effectiveness of surveys in assisting the Trademark Office and courts in determining whether a domain name has acquired trademark significance, along with other best practices in preparing a generic domain name for attempted registration or enforcement as a trademark.
Mr. Frohling is a leading legal strategist on marketing and corporate communications mechanisms and content. He combines over 25 years of counseling, transactional and litigation experience with a passion for forging creative, strategic solutions that achieve the enterprise’s on-the-street and online goals within its risk profile. Mr. Frohling works with clients in a variety of industries, including retail and consumer brands, real estate, and industrial manufacturing, both domestically and internationally. He fosters, supports and defends all aspects of clients’ marketing and communications efforts, including brand clearance, exploitation and policing; advertising disputes; marketing co-ventures; e-commerce ventures and disputes; corporate responsibility initiatives; ad agency agreements, disputes and terminations; talent deals and terminations; and the protection and exploitation of media content.
Mr. Fingerhut is the former leader of the firm’s Trademark & Copyright Practice for eight years. Ranked as a First Tier trademark lawyer in the World Trademark Review’s “WTR 1000,” he has practiced all aspects of global brand identity and reputation management for more than 25 years. His practice includes trademark, copyright, right of publicity, advertising, marketing, domain name and new media law. Throughout his career Mr. Fingerhut has registered and protected many of the world's best known brand names in the automotive, bicycle, clothing, food, hospitality and technology industries. The crux of Mr. Fingerhut’s practice includes clearance searches and opinions, global filing programs, designing and implementing trademark protection and enforcement programs, and managing global trademark portfolios. His litigation experience includes infringement, dilution, cybersquatting and unfair competition cases in U.S. district and appellate courts, oppositions and cancellations before the United States TTAB and domain name arbitration proceedings.
Mr. Feldman, Vice Chair of the firm’s Trademark & Brand Management Group, counsels companies, organizations, and individuals on the protection of their intellectual property rights. He focuses his practice on establishing effective domestic and international brand management best practices and resolving intellectual property controversies between his clients and third parties, including trademark, copyright, domain-name and right-of-publicity disputes.
The Supreme Court in U.S. Patent and Trademark Office v. Booking.com B.V. held that a domain name composed of a generic word (Booking) and a generic top-level domain (.com) can qualify for trademark registration if consumers view the domain name as a composite mark that denotes a source of goods and services and not as a generic term. The Court held that a generic term with ".com" is a "generic name for a class of goods or services only if the term has that meaning to consumers." The decision opens up the playing field for companies owning well-known domain names containing only generic terms “before the dot” and allows for the opportunity for trademark protection.
The decision will likely impact the volume of applications for generic + .com domain-name composite marks and the volume of appeals to the Trademark Trial and Appeal Board of genericness refusals against generic + .com domain-name composite marks. Because the Supreme Court determined that the registrability of a generic + .com domain-name composite mark turns on consumer perception, practitioners and brand owners will want to understand the best practices in creating a record of consumer recognition for ex parte appeals.
Listen as our authoritative panel of trademark attorneys examines the Supreme Court's June 30, 2020, decision in Booking.com and the implications of the decision on brand management strategy for many notable domain names. The panel will offer best practices for registering generic domain names, including building a strong record with survey evidence and avoiding ancillary refusals such as functionality refusals. The panel will also offer insight on cost-benefit analyses for seeking registration of generic + .com domain-name composite marks.
- U.S. Patent and Trademark Office v. Booking.com B.V. (U.S. June 30, 2020)
- Implications of Booking.com decision for registration of generic + .com domain-name composite marks
- Implications of Booking.com decision for enforcement of generic + .com domain-name composite marks
- Building a record for registering generic + .com domain-name composite marks
- Other implications of the Booking.com decision
The panel will review these and other key issues:
- What will the Supreme Court's decision mean for registering and enforcing generic + .com domain-name composite marks?
- How should particular evidence regarding a mark's significance be analyzed and weighted?
- What best practices should counsel employ to get trademark protection for generic + .com domain-name composite marks?
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