By: Kennington Groff
Lilenfeld PC

So, what really is the difference between a Section 1(a) actual use application and a Section 1(b) intent to use trademark registration application? Is one application better than the other? Why would I file a trademark registration application if I am not actually using my mark? How do I protect this new name I thought of for by business/product? To learn more about the option that is right for you and the pros and cons of each application check out our comments below.

In order to file a Section 1(a) trademark registration application, referred to also as an Actual Use Application, a company/individual must be actively using its trademark in commerce in relation to the goods and/or services it offers or sells. The Trademark Manual of Examining Procedure § 901.01 defines what this “use in commerce” means:

The term “use in commerce” means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.  For purposes of this Act, a mark shall be deemed to be in use in commerce–

• (1) on goods when—
• (A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and
• (B) the goods are sold or transported in commerce, and
• (2) on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services.

So, when an Applicant can show that it is actively using its mark in commerce in connection with the services/goods it offers, then a Section 1(a) Actual Use application for registration should be filed.

A Section 1(b) Intent to Use application is a way to protect a trademark before you start using it.

One of the greatest benefits of an intent to use application is the opportunity for a company/individual to “reserve” a mark and prevent others from registering a mark in the event they file an application after you. This “reservation” can save people from a rebrand and can make it costly for later filed trademark registration applicants to try and register their mark/ prevent you from using your mark. It can also serve as a deterrent for anyone searching the Trademark Office for marks already in use.

Once an intent to use trademark registration has gone through the process with the Trademark Office and a Notice of Allowance has been issued, this triggers the next steps in the process to show the Trademark Office you are using your mark. Applicants have two options at this time to either (1) convert their application to an in-use application by filing a statement of use showing the Trademark Office their mark is now in use in commerce in connection with their goods/ services or (2) filing an extension to buy more time to show the Trademark Office their mark is not yet in use. A total of 5 extensions are allowed and must be renewed every six months after the Trademark Office issues a Notice of Allowance.

All in all, determining which trademark registration application to file is critical to determining the validity of your mark. Further, waiting too long to file a trademark registration application can result in someone already having obtained a registration on your mark or a mark similar to yours that can costs you a significant amount of time and money down the road to try and obtain a registration for your mark.

If you are not sure when to file a trademark registration application or which application to file, contact Lilenfeld PC at (404) 201-2520 with any questions you may have regarding applying to register your trademark.

By: Robin Gentry
Lilenfeld PC

As more and more businesses transition to virtual workplaces and become more comfortable with virtual meetings and working from home, it is natural to wonder if your lawyer needs to be located in the same state as your business. For most intellectual property questions, your lawyer can be located anywhere in the United States. The reason is because most of the relevant intellectual property laws involving patents, trademarks, copyrights and trade secrets are federal laws which are the same throughout the United States. So unlike other types of attorneys who practice personal injury, estate planning, family disputes and criminal law to name a few, your intellectual property attorney is not confined by the boundaries of their state.

For example, the United States Patent and Trademark Office (“USPTO”) is responsible for rules governing how to obtain a federal trademark registration for product and service identification and for issuing patents to inventors for their inventions for all applicants, regardless of where the business is located. The same is true for the United States Copyright Office, which is a part of the Library of Congress. The Copyright Office maintains records of all copyright registrations throughout the US. Intellectual property attorneys can file these applications from anywhere. In fact, because copyright, trademark, and patent rights are governed by federal law and protection extends nationwide, intellectual property attorneys focus on broad spectrum protection of their clients’ interests that are not focused on any one particular state.

Prior to the 2020 shelter in place regulations and shutdown, intellectual property attorneys were accustomed to having clients that they rarely, if ever met in person. Telephone, email and video-conferencing were already existing powerful tools that allowed intellectual property attorneys to communicate with clients whose needs were able to be easily handled without the necessity of being located in the same city or even state.

At Lilenfeld PC, we work with you to protect your company’s trademarks, copyrights and inventions. If you have any questions or would like a consultation, please contact us at (404) 201-2520.

By: Robin Gentry
Lilenfeld PC

You may have missed it if you were enjoying some much-needed time off between Christmas and the New Year, but on December 27, 2020, the Trademark Modernization Act of 2020 was signed into law as part of the coronavirus relief bill.

While the new law touches on a variety of different aspects of trademark law, there are two key provisions that were amended. These important new provisions include (1) powerful new tools to challenge trademark registrations at the United States Patent and Trademark Office (“USPTO”) when the trademark has not actually been used in commerce and (2) an important provision for trademark holders involved in litigation.

When an applicant applies for a trademark registration, the applicant is allowed to choose which goods and services are associated with the trademark. Further, the applicant must state whether these goods or services have been used in connection with the mark in interstate commerce or the applicant intends to use the mark in the future in connection with these goods and services. However, to qualify for a U.S. registration, the trademark must have been used in connection with those goods and services in interstate commerce. Unfortunately, some applicants list a number of goods and services that the applicant has never provided and has never used the trademark on. This creates a serious, and sometimes very costly, problem for other trademark users because it is possible that the same (or similar) trademarks can be used by different owners when the goods and services are very different, such as Delta airlines and Delta faucets.

First, the Trademark Modernization Act of 2020 now makes it easy for third parties to submit evidence in a letter of protest directly into the record of an application where such evidence provides a ground for refusal of the registration. Examples of such evidence include showing that the applicant does not use the trademark on a listed good or service.

Next, the Trademark Modernization Act of 2020 also provides an expedited process to remove any issued registrations if the trademark has not been used in interstate commerce in the United States for the listed goods and services. Anyone wishing to challenge a registered mark must submit a petition with evidence of a reasonable investigation regarding the challenged mark and specific goods or services that the petitioner alleges are not being used. The Director of the Trademark Office may then notify the registrant and open proceedings to expunge the registration upon a finding of a prima facie case. This new expedited process provides an alternative to a cancellation proceeding before the TTAB, but must be filed three years after a registration.

Lastly with regard to the TTAB, the Trademark Modernization Act of 2020 also provides new rules about the length of time for responses to Office Actions during the trademark application process. Now, an Examiner is allowed to set the time to respond to an Office Action from 60 days to 6 months. Traditionally, an applicant always had 6 months to respond. An applicant may request an extension for up to 6 months from the date of the Office Action so long as the applicant pays a fee for the extension.

Finally, on the trademark litigation side, the Trademark Modernization Act of 2020 provides that there is a rebuttable presumption of irreparable harm when a trademark is infringed. This is important because a showing of irreparable harm is necessary to obtain an injunction to prevent an infringer from using your mark. Courts have varied on whether harm could be presumed in the past, but this new Act clarifies that upon a finding of trademark infringement, irreparable harm can be presumed in a request for injunctive relief.

While this new Act has been signed into law, all of these changes are tentatively scheduled take effect by December 27, 2021.

By: Robin Gentry
Lilenfeld PC

Back in 2011, the America Invents Act (AIA) created  the United States Patent Trial and Appeal Board (PTAB) to strengthen the U.S. Patent System by providing an efficient system for challenging patents. Recently, the United States Supreme Court heard oral arguments in a case dealing with the power of judges appointed to the PTAB. PTAB judges hear appeals by patent applicants who have had their claims rejected by a patent examiner and also conduct trials in cases brought by challengers to patent claims that have already been granted. In ruling on issues in these trials, PTAB judges have cancelled (invalidated) thousands of issued patents.

The problem, according to Arthrex is that PTAB judges are appointed by the Director of the U.S. Patent Office. They are not appointed by the President and confirmed by the Senate like other federal judges. According to Arthrex, this violates the Appointments Clause of the U.S. Constitution.

The Solicitor General’s Office counters that the U.S. Patent Office Director has sufficient authority and control over PTAB judges making them “inferior Officers” that do not need to be appointed by the President.

If the Supreme Court agrees with Arthrex, it is possible that a large number of previous PTAB decisions will be voided with cancelled patent claims potentially being revived. The Supreme Court could possibly find that PTAB judges should have been appointed by the President but may fashion a “fix” that would allow the previous decisions of the PTAB judges to remain in place.

A decision is expected during the current term of Supreme Court which ends in September 2021, so we will be monitoring this case closely to determine the effect it could have on not only our Clients, but registered and challenged patents moving forward.

By: Kennington Groff

Lilenfeld PC

A trademark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others. In simpler terms, a trademark is your brand identifier such as a name, slogan or logo. While choosing the right trademark can be overwhelming, the careful time devoted to selecting a protectable mark and registering it can be helpful when avoiding disputes as your business grows. Below are five tips to help you avoid trademark disputes and a potential costly rebrand.

Only Adopt A Trademark After It Is Cleared

Clearing your trademark is step one in avoiding trademark disputes. Before you adopt a new trademark, to the greatest extent you can, you should devote time and resources into making sure that your new mark will not infringe on another party’s trademark rights. While this may sound obvious, we see many trademark disputes occur that could have possibly been avoided if more time and effort was made in initial research about a potential trademark for your brand.

Once you identify a trademark you want to use for your brand, we generally suggest you do some digging around on the internet to see if you can find any marks that are identical or similar to marks in connection with your goods and/or services and any closely related goods and services. Then, if you do not find anything that appears to be problematic, your next step is to reach out to a trademark attorney to (1) conduct a formal, thorough “trademark availability search” through a vendor or (2) file your application for your trademark(s). While a clearance search through a vendor does not guarantee that no issues will pop up with your new trademark, it generally lowers the risk and gives your new trademark the best start at avoiding a dispute.

Register Your Trademark(s)

Trademarks should be registered in almost all cases. They can be registered with the federal government, specifically the United States Patent and Trademark Office, with individual states and internationally. While states allow you to secure a trademark registration, the federal registration of your mark affords more protection because it protects your mark throughout the country instead of just one state.

In order to obtain a federal trademark registration, the trademark owner must be using the mark in “interstate” commerce, which most marks are. A federal trademark registration will give the owner national rights to its mark, including preserving its right to expand into geographic regions throughout the United States not previously expanded into, which state registration will not allow.

A federal registration also serves as a deterrent to others seeking to use a mark similar to yours. The registration shows you are active in protecting your trademark rights, and once registered for five years of continuous use of your mark, your mark can also gain what is known as “incontestable” status which makes your mark even stronger.

Lastly, if a dispute over your trademark arises, your federal registration entitles you to a few things: (1) presumption from the court that your registration is valid, (2) additional damages in the event your mark is found to have been infringed and (3) easier working conditions with the United States Customs Service to prevent  the importation of unauthorized goods bearing your register mark into the United States

Actively Manage Existing Trademark Registrations

Once your mark is registered, to maintain exclusive rights to your mark, you are obligated to “police” the mark. This means that you need to take steps to stop others who are using the Mark or a similar Mark in connection with related goods or services. If you are aware of infringers you should contact your attorney. Failing to take action to protect your mark could cause your trademark rights to be weakened or lost.

Below are additional important items when, managing your existing registrations:

1. Keep the registration ownership information up to date, including the company name, address and contact email address or important correspondence from the trademark office of someone trying to reach you about your mark may be missed.
2. Ensure your registration renewal deadlines are met to show proof of your continued use of the mark.
3. Review your registration to determine availability of incontestability status, and the potential to apply for the Principal Registerer for a mark that is currently registered on the Supplemental Register.
4. Review the goods and services offered under your registration to determine if a new class of goods or services needs to be added to your mark to expand the protections of your mark.

Set Up A Watch Service

Once your clearance search is complete, trademark is registered and you are actively managing your registration(s), the next prudent step to protecting your brand is setting up a trademark watch service. A trademark watch service generally monitors sources such as the Trademark Official Gazette, and will alert you of newly-filed applications or applications that are in the publication period of the Unites States Patent and Trademark Office that may be confusingly similar or infringe upon your mark. This information can be invaluable to you as a trademark owner since it allows you to take action early through the Trademark Trial and Appeal Board in the form of an opposition.

While watch services costs can range depending on the type of services required, it is far better to pay these fees up-front than to try and stop infringement once it has started. Think of this as preventive care when protecting your registered mark.

Review the Trademark Official Gazette

Lastly, another preventive measure when it comes to protecting your mark is to regularly review the Trademark Official Gazette (TMOG). Every Tuesday, the TMOG provides bibliographic information and a drawing for each mark published, including a list of cancelled and renewed registrations. Reviewing the TMOG allows you to see any marks that may be confusingly similar to your mark, including actions the United States Patent and Trademark Office is taking with regard to those marks.

The 30-day publication period in the TMOG of new marks allows opposers, such as yourself, to file an opposition if you believe that mark will be damaging to your trademark registration. Remaining informed about these filings will arm you with the information you need to ensure your mark remains protected.

At Lilenfeld PC, we work we can work with you to protect your company’s brand and trademark. If you have any questions or would like a consultation, please contact us at (404) 201-2520.

By: Kennington Groff

Lilenfeld PC

At the heart of any business is its distinctive brand and the ideas behind it that set it apart. Intellectual Property affects all individuals and businesses from entrepreneurs, start-ups, national and international companies in a variety of industries including technology, financial services, computer hardware and software, pharmaceutical, manufacturing, marketing, fashion and entertainment to name a few. No matter what stage your business is at, the most important thing is protecting your brand and ideas.

So you’ve heard the term Intellectual Property before, but what does it actually mean? The law defines Intellectual Property as “any product of the human intellect that the law protects from unauthorized use by others.” In simpler terms, it is defined online as “a work or invention that is the result of creativity….to which one has rights.” There are 4 types of Intellectual Property: (1) Trademark, (2) Copyright, (3) Patent and (4) Trade Secret.

How do you know which type of protection you need? Check out the below descriptions of each form to help you distinguish the protection that is best suited for you or your business.

Trademark

The United States Patent and Trademark Office defines a trademark as “a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others.” The main goal of a trademark is to (1) prevent consumer confusion and (2) be a source identifier to allow a customer to quickly identify your goods/services. This helps businesses and inventors protect their reputations and investment so that consumers are not misled.

One of the biggest ways to protect your goods and/or services is to register your trademark with the United States Patent and Trademark Office. This puts infringers on notice that your brand is registered and allows you to include the registered trademark symbol, which is: ®

For example, the McDonalds golden arches, the Nike swoosh, Coca-Cola’s glass bottle and Apple’s apple logo are all examples of design trademarks aka logos and brands. These are all examples of excellent logos that have become so distinguishable that they don’t require words to be identifiable by a consumer. Further, when we hear words like Starbucks, FedEx, Mercedes-Benz, and Google to name a few, a logo or a description of the goods/services offered by these companies is not required because we immediately associate the word with the goods/services.

Now, you might be thinking what about brands that have the same name like “Delta” for planes and “Delta” for faucets? If two business operate in completely different market spaces, then they may have the same trademark. This is because ultimately the goal of trademarks is to prevent brand confusion, and consumers are not going to confuse an airplane with a faucet. Consumers are not going to mistakenly go to buy faucets at the airport.

Unlike copyrights and patents, trademark rights can potentially last indefinitely. Trademark rights are based on actual “use” so as long as a trademark owner continues to use its mark in commerce to identify its goods/services, the rights in that mark can last forever. However, in order to maintain a trademark owner’s exclusive rights to use its mark in connection with its goods/services, the owner is required to “police” its mark. This means that the trademark owner needs to take steps to stop others who are using the mark or a similar mark in connection with related goods or services. If you are aware of infringers you should contact an attorney to reach out to the potential infringer. Failing to take action to protect your mark could cause your trademark rights to be weakened or lost.

Copyright

Copyright is a form of protection that extends to “original works of authorship fixed in a tangible medium of expression.” Copyrights protect works including “literary, dramatic, musical, and artistic works,” such as poetry, novels, stage productions, movies, songs, sculptures, photographs, sheet music, and elements of fashion design and architecture.” Copyright protection even extends to digital material such as computer software, video games, online videos, website content, and even social media content. Things such as ideas, facts and methods of operation are not copyrightable, but the expression of ideas are, which includes both published and unpublished works.

In order to be afforded copyright protection, the work of authorship must (1) meet the requisite levels of creativity and originality and (2) be “fixed in a tangible medium” that can be “perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device” for more than a transitionary period of time.

The owner of a copyright has the right to reproduce the work, prepare derivative works, distribute, display and perform it, and license the work for a period generally extending for the life of the author plus 70 years after the authors death.

There is a common misconception that copyright registration isn’t really all that important since certain works are protected by copyright law once they’ve been created in a tangible form; however, you will not be able to enforce your rights in that work unless you have registered your work with the United States Copyright Office – or at least proven that you tried and were refused. Further, if you register your work after infringement has occurred, your recoverable damages will be limited.

Copyright protection is robust, but there is an important exception to copyright infringement that is known as “fair use.” Fair use allows someone to use copyrighted materials without the owner’s permission as long as the use is “fair.” Generally, examples of qualifying fair use include criticism, comment, news reporting, teaching, scholarship, and research. Under Section 107 of the Copyright Act fair use is evaluated through a four factor analysis: (1) purpose and character of the use, including whether the use is of a commercial nature or is for nonprofit educational purposes, (2) nature of the copyrighted work, (3) amount and substantiality of what was taken, and (4) effect of the use upon the potential market for or value of the copyrighted work.

Overall, the main thing to remember for copyright protection is to make sure to register your work and do so early.

Patent

A patent is defined as “a limited duration property right relating to an invention, granted by the United States Patent and Trademark Office in exchange for public disclosure of the invention.” In simpler terms, a patent is the exclusive rights granted in an invention. It prevents or excludes others from making, using, offering for sale, selling or importing the invention, instead of granting the inventor the right to make, use, offer for sale, sell or import the invention.

There are three types of patents: (1) utility, (2) design and (3) plant. Utility patents may be granted to inventors who invent new or useful processes, machines, methods of manufacture or composition of matter, or new and useful improvements thereof. Design patents may be granted to inventors who invent a new, original, and ornamental design for an article of manufacture. Specifically, design patents are based on a product’s decorative, non-functional features. Lastly, plant patents may be granted to inventors who invent or discover and asexually reproduce any distinct and new variety of plant.

There are five basic requirements for patent eligibility. (1) The invention must be “patentable subject matter” which is broadly defined as “any process, machine, manufacture, or composition of matter, or improvement thereof.” (2) The invention must be useful (specific requirement only for utility patents). (3) The invention must be novel or new. (4) The invention must be non-obvious meaning its use must be sufficiently different from something that is considered the next logical step in a prior patent or from what has been used before to a person having ordinary skill in the area of technology related to the invention. (5) The invention must not have been disclosed to the public less than one year before the patent application was filed.

Generally, the term of a patent is 20 years from the date the application for the patent was filed with the United States Patent and Trademark Office. An inventor has the right to license or sell its patent to other parties until the patent expires. Once a patent expires, the invention enters the public domain and can be exploited for commercial use without infringing on the rights of the patent holder.

Trade Secret

In addition to trademarks, copyrights, and patents, the fourth and final type of intellectual property is trade secrets. A trade secret is defined as any business information which is intended to be kept secret. In order to qualify as a trade secret, that information must have economic value such that the business would be harmed if the information became public. Trade secrets are generally not known to the public and a reasonable effort must be made to ensure their confidentiality and secrecy.

Trade secrets protect certain information such as formulas, patterns, compilations, programs, devices, methods, techniques and processes that are not known to the public. The different types of trade secrets are very broad. For example, a trade secret can be a recipe, design, advertising strategy, client lists and sales methods to name a few. One of the most recognized and most valuable trade secrets is the formula for Coca-Cola.

As long as the trade secret provides economic value and remains a secret to the public, trade secrets can last indefinitely. Also, unlike the other forms of intellectual property, there is no procedure for registering a trade secret. It remains with the holder(s) of the secret.

As you can see from the above, each type of intellectual property serves a different purpose. While some items only qualify for one type of protection, some items will qualify for more than one.

To learn more about what type of intellectual property protection you need, please contact Lilenfeld PC at (404) 201-2520.

By: Robin Gentry

Lilenfeld PC

Good news for copyright holders seeking to enforce their creations! A new copyright law (the Copyright Alternative in Small-Claims Enforcement Act of 2020) has been passed and will come into effect by December 2021.

This new copyright law establishes an administrative agency to adjudicate small copyright claims. Before this law was enacted, copyright holders could only sue in federal court which is often very time consuming and expensive. With this new alternative, if someone has infringed your copyright, you can bring a claim before a three person panel board of copyright experts. In order to qualify for this alternative your damages must be no more than $15,000.00 per work and $30,000.00 per proceeding. The copyright holder then has to choose between either statutory damages or actual damages.

The new small claims act is directed to cases of infringement on the internet, such as when a copyrighted photograph is posted on the internet without permission of the artist. But anyone who has had their work copied in any form may bring a claim. This could be a powerful new method for artists and creators who have been harmed by copyright infringement, but can’t afford the attorney fees necessary to bring a case in federal court.

This new Board will be able to hear and rule on copyright infringement claims, award damages and issue an order that the infringer stop the infringement. The Board will also be able to hear cases involving false takedown notices and cases where an accused infringer asks for an order that she is not infringing the rights of another individual.

There are a few different procedural rules that are different from litigation in federal court. First, a defendant may opt out of having the case heard by the Board. If that happens, the plaintiff can bring the case in federal court. Second, attorneys’ fees are not available to the winning side, as they generally are in federal court. Third, while a party may be represented by an attorney, it is not necessary.

Also, a plaintiff need not have an issued copyright registration to file a case, which is required for suit in federal court. Instead of an issued registration, a plaintiff only needs to have applied for a copyright registration. Moreover, a plaintiff who files a copyright registration more than three months after the infringement begins may still recover a statutory damages award up to $7,500.00 which would not be available in a federal case.

Specific rules for how these cases will be conducted will be issued this year and the Board members will be named. Lilenfeld PC will continue to monitor the developing law and help its clients decide the best forum to stop infringement.

By: Kennington Groff

Lilenfeld PC

Don’t trust your brand to just any lawyer – both enforcing and not enforcing your company’s trademark rights can damage your brand.

When you move to enforce your trademark rights, you are putting your trademark in the line-of-fire, where it will very likely be attacked by the opposing party. A trademark can be attacked in a variety of ways, most frequently through arguments that the mark is (1) generic, (2) has been abandoned for non-use, (3) misrepresentation to the Trademark Office, and (4) fair use.

In Haughton Elevator Co v. Seeberger, 85 U.S.P.Q. 80 (1950) trademark rights were lost because the mark ESCALATOR had become generic and therefore lost its trademark status. The court found that Otis Elevator failed to protect the ESCALATOR mark and it became known to the general public as the name for a moving stairway. ESCALATOR was no longer used to identify the moving stairways created by its original founder, Otis Elevator, but rather it became the word to identify all moving stairways. Now anyone can use the word ESCALATOR to describe a moving stairway. Additionally, several of these famous brands lost their trademark rights due to genericide: Aspirin, Trampoline, Thermos, Dry Ice, Laundromat, App Store, Yo-Yo and Zipper.

Further, marks can become abandoned if the owner stops using the mark. Even a short period of nonuse may lead to abandonment in certain circumstances so its important to seek the advise of a lawyer before you even temporarily stop using a mark.

Trademark law permits others to use your mark if that use qualifies as fair use. Permitted uses include allowing a person to use a mark in 1) a non-trademark, descriptive sense to describe a trademark holders goods and/or services and 2) to refer to a trademark owner or its good and/or services. The owner of trademark rights must police this carefully in order to not lose their rights and prevent infringement.

Lastly, any misrepresentation to the Trademark Office, including fraud or misrepresented facts, when applying to register your mark can result in a loss of trademark rights.

This should make clear to everyone that only experienced (truly experienced) trademark lawyers should be used to enforce your trademark rights. As discussed elsewhere, many lawyers claim to have trademark law expertise, but they are actually novices with little to no experience. Make sure you hire a qualified trademark lawyer to brand your brand.

At Lilenfeld PC, we work we can work with you to protect your company’s brand and trademark by getting an opposing company to stop using a deceptive comparative advertisement. We also can defend your comparative advertisement and trademark against another company if you received a demand letter or if a lawsuit was filed against you. If you have any questions or would like a consultation, please contact us at (404) 201-2520.

By: Robin Gentry

Lilenfeld PC

The Supreme Court has issued its opinion in a trademark case involving the mark “Booking.com.”  In that case, the Court refused to adopt a bright line test that any generic term when combined with “.com” is generic. Instead, the Court ruled that whether “any given ‘generic.com’ term is generic  . . . depends on whether consumers in fact perceive that term as the name of a class, or instead, as a term capable of distinguishing among members of the class.”

Both parties agreed that the term “booking” was generic for making travel reservations.  Booking.com argued that the combination of “booking” and “.com” was not generic, however, because consumers recognized the mark as descriptive for services involving booking hotel reservations.

The Trademark Office did not appeal the underlying decision regarding how consumers perceived “booking.com” but instead argued that the combination of a generic term with “.com” always produces a generic mark. The Trademark Office relied heavily on an 1888 decision that held that the combination of a generic term with a generic corporate designation, such as “Inc.” is always generic.

The Court rejected the Trademark Office’s argument.  In rendering its decision, the Court focused on the traditional test for determining whether a term is generic: whether the primary significance in the mind of consumers is a class of goods instead of a particular entity selling goods. Because the Trademark Office did not challenge the lower court’s findings regarding the primary meaning of the term, the Court affirmed the decision that Booking.com could be registered.

Both J. Breyer (in dissent) and J. Sotomayor (concurring) raised concerns regarding the use of survey evidence when litigating whether a trademark is generic or distinctive. Such survey evidence has traditionally been considered the “gold standard” but courts and litigants have relied less upon survey evidence in recent years. The further evolution of surveys in trademark cases, is something that should be carefully watched by both attorneys and those holding trademark portfolios.

By: Robin Gentry

Lilenfeld PC

On April 23, 2020, the Supreme Court issued a ruling in Romag Fasteners, Inc, v. Fossil, Inc. that should make it easier for trademark owners to be awarded the defendant’s profits when someone infringes their mark. The Supreme Court took the case because some, but not all, appeals, or circuit courts, required that a trademark owner prove “willful” infringement before the Court would award profits. The Eleventh Circuit, which hears cases from Georgia courts, and the Second Circuit, which hears cases from New York, were two of the Circuits that required “willful infringement.” Willful infringement is hard to prove and is usually reserved for cases involving only the most premediated and calculated of defendants, or those that refused to stop infringement after being warned to do so. This meant that trademark owners could often stop the infringement but could not get a damages award.

In its Romag Fasteners decision, the Supreme Court ruled that a finding of willful infringement was not a necessary precondition for awarding a defendant’s profits. The Court focused on the text of the Trademark Act (called the Lanham Act).  The Court noted that the statutory language had “never required a showing of willfulness to win a defendant’s profits” for trademark infringement. In contrast, the Lanham Act explicitly required that a defendant’s infringement be willful to receive profits in a dilution case. According to the Supreme Court this meant that if Congress had intended to limit damages to cases of willful trademark infringement, it would have included specific language in the statute.

The Supreme Court rejected Fossil’s argument that the phrase “principles of equity” in the statute required that profits only be awarded in cases of willful infringement.  The Supreme Court examined the history of the statute and the general meaning of principles of equity and concluded that “it seem a little unlikely Congress meant ‘principles of equity’ to direct us to a narrow rule about a profits remedy within trademark law.” The Court also noted that while some courts had historically required willfulness for a profits award, the majority of cases did not.

Despite holding that a finding of willfulness was not required to award a trademark owner the defendant’s profits, the Court noted that it did “not doubt that a trademark defendant’s mental state is a highly important consideration in determining whether an award of profits is appropriate.” But, it refused to make that willfulness an “inflexible” requirement.

So, it is likely that a trademark owner will be more likely to receive a defendant’s profits if it can show willfulness. But in cases where it cannot, the trademark owner can make other arguments for why it should be awarded profits. We expect to see more awards of profits after this case and will watch to see how the law continues to develop.