2020 has been an unforgettable year. Not even a global pandemic could stop courts of all levels from issuing important decisions regarding intellectual property. While many of us are anxious to leave 2020 behind, let’s take a look back on some of the top intellectual property law cases from 2020 and look ahead to what we can anticipate in 2021.
Trademark Law
Booking Opens the Door to (some) Protection for Generic Domain Marks
In U.S. Patent and Trademark Office v. Booking.com B.V. (140 S. Ct. 2298 (2020)) the U.S. Supreme Court affirmed the US Court of Appeals for the Fourth Circuit’s affirmance of a district court decision reversing the United States Patent and Trademark Office (USPTO) refusal to register the term “Booking.com” on grounds that it is a generic term. The Supreme Court held:
- A term styled “generic.com” is a generic name for a class of goods or services only if the term has that meaning to consumers; and
- “Booking.com” is not a generic term because, as shown in record, consumers do not perceive the term to mean a class of online hotel-reservation services.
Booking.com filed applications for the marks shown below for use with a variety of services which essentially all amounted to hotel room reservation services:
U.S. Serial No. 79122365 and U.S. Serial No. 79122366
The Trademark Office initially refused registration on the grounds the marks are merely descriptive of Booking.com’s services. When Booking.com claimed, in the alternative, that its marks had acquired secondary meaning, the Examining Attorney issued new refusals on grounds that the marks are “generic” as applied to the services. The TTAB affirmed the refusal, but the District Court and Fourth Circuit disagreed finding that the mark had acquired distinctiveness. The Supreme Court agreed dispelling the USPTO’s per se rule that combining a generic term with a generic top level domain (.com) must yield a generic (unprotectable) term and rejecting a long list of policy concerns advised by the USPTO.
Does this mean that every “generic.com” domain owner can register its domain? Not exactly. Several months after the decision, the USPTO released Examination Guide 3-20 to clarify the procedure for examining trademark applications to register terms with generic top-level domains. The Examination Guide indicates that “generic.com” style terms are likely to be deemed highly descriptive, and applicants must clear a high bar in proving acquired distinctiveness under Section 2(f). The USPTO also references the Supreme Court’s caution that consumer surveys used to show acquired distinctiveness must be properly designed and interpreted to ensure that they are an accurate and reliable representation of consumer perception of a proposed mark. Finally, both the Supreme Court in Booking.com and the USPTO in the Examination Guide recognize that “generic.com” style marks that achieve registration may have a narrow scope of protection and Examining Attorneys will take that into account when issuing 2(d) refusals.
While Booking.com opened the door slightly, it is clear that the path to registration of a “generic.com” trademark is narrow, and the protection afforded a mark that achieves registration is limited.
A Snap Decision
In Romag Fasteners Inc. v. Fossil Inc. et al., the U.S. Supreme Court unanimously held that trademark infringers can be forced to hand over their profits to the trademark owner even if they are not “willful infringers.” Romag Fasteners and Fossil signed an agreement to use Romag’s trademark-protected metal fasteners in Fossil’s leather goods. Romag later discovered that factories in China manufacturing Fossil’s goods were using counterfeit Romag fasteners. Romag sued Fossil for trademark infringement. Although Romag won on the infringement claim, the Second Circuit refused to issue a $6.8 million award of Fossil’s profits because Romag could not prove Fossil infringed the trademarks willfully.
The Supreme Court ruled that trademark infringers can be forced to hand over their profits to a trademark owner even if they have not violated the law willfully. The justices unanimously sided with Romag Fasteners over when courts should order such awards of profits, one of the few forms of monetary damages available under trademark law. While some lower courts held that these damages could only be awarded when someone willfully infringes a trademark, the justices held that the Lanham Act contained no such restriction. The Court held that a plaintiff in a trademark infringement suit is not required to show that a defendant willfully infringed the plaintiff’s trademark as a precondition to a profits award.
However, the Court did not rule out willfulness as a factor to consider when weighing an award of profits. Justice Gorsuch stated that a trademark defendant’s mental state is a “highly important consideration” in determining whether an award of profits is appropriate. The Court disagreed; however, the willfulness is an “inflexible precondition” to an award of profits as damages. This case settled a circuit split regarding the required mental state for an award of profits.
A Lasting Engagement: Tiffany & Co. v. Costco Wholesale Corp
In November 2012, a customer alerted Tiffany & Co. that Costco was selling diamond engagement rings that the customer believed were being advertised as Tiffany & Co. rings. After further investigation, Costco admitted to selling rings with identifying signs using phrases such as “Tiffany setting,” “Tiffany set,” or “Tiffany style,” and in some instances using only the word “Tiffany” for identifying the setting style of the ring. In February 2013, Tiffany filed suit against Costco claiming trademark infringement, dilution, counterfeiting, unfair competition, false and deceptive business practices, and false advertising in connection with Costco’s signs that included the word “Tiffany” without being accompanied by the words “setting,” “style,” or “set.” In response, Costco asserted that its use of the word “Tiffany” was not infringement. Additionally, Costco raised a fair use defense under the Lanham Act and filed a counterclaim seeking to modify or partially cancel any federal trademark registrations that might prevent retailers from using the word “Tiffany” to indicate that a ring has a Tiffany setting.
In September 2015, the district court granted Tiffany’s summary judgment motion and concluded that Costco failed to raise a genuine issue of material fact as to any of the relevant factors to the infringement analysis, that Costco’s fair use defense failed as a matter of law, and Costco’s infringement constituted counterfeiting. In August 2017, the district court entered a final judgment and awarded damages in an amount of over $21 million to Tiffany. In September 2017, Costco appealed to the Second Circuit.
In August, the Second Circuit reversed, finding that the district court erred in finding Costco liable for trademark infringement and counterfeiting. The Second Circuit held that the district court granted Tiffany’s motion for summary judgment in error, which in turn deprived Costco of the opportunity to present its case. The Second Circuit found that a jury could reasonably conclude that consumers of diamond engagement rings would know or would...
