PART I. EX PARTE CASES
A. United States Supreme Court
USPTO v. Booking.com B.V., 591 U.S. ___, 140 S.Ct. 2298 (20200). In a closely watched case – at least by trademark attorneys – the United States Supreme Court ruled that a proposed mark comprising a generic term coupled with ".com" is not automatically generic, but may be registrable provided that consumers perceive the mark as a source indicator. The Court affirmed the judgment of the U.S. Court of Appeals for the Fourth Circuit, which rejected the USPTO's argument that the combination of ".com" with the generic term "booking" is generic for online hotelreservation services. The Supreme Court concluded that "[i]n circumstances like those this case presents, a 'generic.com' term is not generic and can be eligible for federal trademark registration." The parties agreed that "[e]ligibility for registration ... turns on the mark's capacity to 'distinguis[h]' goods 'in commerce.'" The question of whether BOOKING.COM is generic "turns on whether the mark, taken as a whole, signifies to consumers the class of online hotel reservation services." The Supreme Court pointed out that "the courts below" determined that consumers "do not in fact perceive the term 'Booking.com' that way." "That should resolve this case. Because 'Booking.com' is not a generic name to consumers, it is not generic."
B. United States Court of Appeals for the Federal Circuit
1. Registrability of Color for Product Packaging
In re Forney Industries, Inc., 2020 USPQ2d 10310 (Fed. Cir. 2020) [precedential]. The U.S. Court of Appeals for the Federal Circuit (CAFC) weaved its way through Supreme Court precedent on the law of color marks in vacating (and remanding) the TTAB's decision upholding a refusal to register a color mark for multiple colors applied to product packaging. The Board concluded that such a mark cannot be inherently distinctive, but the CAFC disagreed, holding that "color marks can be inherently distinctive when used on product packaging, depending upon the character of the color design." Forney sought to register a mark comprising the colors "red into yellow with a black banner located near the top as applied to packaging" for metal hardware, welding equipment, safety goods, and marking products. The Board saw "no legal distinction between a mark consisting of a single color and one, such as [Forney's], consisting of multiple colors without additional elements, e.g., shapes or designs." The CAFC found that the Board had "erred in two ways: (1) by concluding that a color-based trade dress mark can never be inherently distinctive without differentiating between product design and product packaging marks; and (2) by concluding (presumably in the alternative) that product packaging marks that employ color cannot be inherently distinctive in the absence of an association with a well-defined peripheral shape or border."
C. Trademark Trial and Appeal Board
1. Section 2(a) False Connection
In re ADCO Industries – Technologies, L.P., 2020 USPQ2d 53786 (TTAB 2020) [precedential]. The Board affirmed two refusals to register each of the word-plusdesign marks shown here, for "utility knives," finding that the marks falsely suggest a connection with President Trump under Section 2(a), and further finding that because President Trump did not consent to use of his name, the marks also violated Section 2(c) [discussed in Part I.C.3, below]. The fact that Donald Trump has never used the term "Trump-It" as his name or identity does not obviate the Section 2(a) refusal. A term may be considered the identity of a person even if the person has not used the term. All that is required is that the mark sought to be registered clearly identifies a person (in this case, Donald Trump). In light of the variety of goods that are sold under the Trump name, the Board concluded that "consumers encountering utility knives bearing Applicant's mark will perceive Applicant's utility knives to be just one more product for which Donald Trump has licensed the use of his name." Perhaps more importantly, in response to applicant's assertion that Sections 2(a) and 2(c) are unconstitutional, the Board pointed out that it has no authority to rule on the constitutionality of the Trademark Act, but it nonetheless considered and rejected applicant's claim.
2. Section 2(b) Simulation of United States Flag
In re Alabama Tourism Department, 2020 USPQ2d 10485 (TTAB 2020) [precedential]. Upholding a Section 2(b) refusal to register the mark shown here, for tourism promotional services, the Board concluded that the mark incorporates a simulation of the flag of the United States. Section 2(b) prohibits registration of a mark that "[c]onsists of or comprises the flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation, or any simulation thereof." The Board found that the U.S. flag and applicant's flag design "are highly similar and that the average member of the public would perceive Applicant's flag design to be a simulation of an actual U.S. flag." Applicant pointed in vain to various flag-containing registered marks, but the Board found them distinguishable and, in any case, pointed out once again that each application to register must be considered on its own merits. Applicant's arguments that a number of features of the flag are missing missed the mark. The fact that the flag is displayed in this manner is not uncommon, and "no reasonable observer of that flag would believe that features are missing or changed, or view it as something other than the U.S. flag."
3. Section 2(c) Consent of Living Individual
In re ADCO Industries – Technologies, L.P., 2020 USPQ2d 53786 (TTAB 2020) [precedential]. As indicated in Section I.C.1 above, the Board affirmed a Section 2(c) refusal to register each of this applicant's word-plus-design marks, for "utility knives," finding that, because President Trump did not consent to use of his name, the marks violated Section 2(c). In pertinent part, Section 2(c) bars registration of a mark that "[c]onsists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent." "While with lesser-known figures there may have to be evidence showing that the consuming public connects them with the manufacturing or marketing of the goods at issue, well-known individuals such as celebrities and world-famous political figures are entitled to the protection of Section 2(c) without having to evidence a connection with the involved goods or services." Applicant admitted that Donald Trump is a well-known political figure and a celebrity, and therefore the Board found that because the subject marks include Donald Trump's name and likeness, his consent to register was required.
Originally published by Allen's Trademark Digest
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