Weekly IP Buzz for the Week Ending July 10, 2020
In this week's post, we see how after a long battle to gain registration of the Booking.com trademark, Booking.com wins in a Supreme Court decision finding that .com can make an otherwise generic term a source identifier.
Plus, claims of naked licensing and trademark abandonment require proof the owner didn’t transfer the goodwill and that with any non-use there was also no intent for future use.
Supreme Court Settles Long Battle for Booking.Com Trademark
In a closely watched trademark case, the Supreme Court has decided in favor of the Booking.com trademark, which means that some companies may now trademark otherwise generic terms with the “.com” domain identifier, if they have become source identifiers, without fear of outright rejection from the U.S. Trademark Office.
The Booking.com case began back in 2011 when Booking.com filed trademark applications to register the BOOKING.COM trademark. The U.S. Trademark Office had denied the applications, stating that “booking” was a generic term and that including “.com” into the mark did not allow it to qualify as a bona fide mark under trademark law. At the lower court levels, however, federal courts found for Booking.com, resulting in repeated appeals all the way up to the Supreme Court.
However, in a landmark decision, the Supreme Court ruled, 8 to 1, that adding “.com” to an otherwise generic term may make that combination eligible for federal trademark protection. This is a clear departure from the U.S. Trademark Office’s stance that merely adding “.com” does not make an otherwise generic term eligible for the trademark register.
Read more here.
Mustang Ranch Brothel Teaches Lessons of Naked Licensing and Trademark Abandonment Claims
The white paper Brian Casper on Trademark Licensing discussed several ways a trademark owner could lose the right to enforce its trademark. The interesting case of the “World-Famous Mustang Ranch Brothel” highlights some important limitations on the prohibition of naked licensing and the concept of abandonment.
To recap from the previous paper: A naked license is an assignment of a trademark without the corresponding goodwill associated with that trademark. Abandonment is presumed under the law when a trademark owner ceases use of a mark for a period of three years with the intent not to resume use.
The 2006-2008 U.S. District Court case of Burgess v. Gilman out of the District of Nevada has an excellent discussion about the limits of naked licenses and the presumption of abandonment. The facts of that case are interesting: The World-Famous Mustang Ranch Brothel was seized in 1999 by the U.S. Department of the Treasury in conjunction with criminal proceedings against the former owner who was convicted of racketeering. The Government held on to the property—with no intent on operating a brothel—from 1999 until it was transferred to the Bureau of Land Management and auctioned off in 2003. However, while the Government did not consider operating a brothel while it held the property and business for four years, it did consider selling or licensing it to a third party, who could use those assets to operate a brothel. And this is what happened in 2003 when Gilman was the highest bidder on the buildings and the “World Famous Mustang Ranch” trademark.
Read the full article here.
Click to read the previous Weekly IP Buzz on Thriving Attorney.
For more posts, see our Intellectual Property Law Blog.
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In addition to Thriving Attorney, Darin M. Klemchuk is founder of Klemchuk LLP, a litigation, intellectual property, and transactional law firm located in Dallas, Texas. Click to read more about Darin Klemchuk's practice as an intellectual property lawyer.