A patent grants its holder the exclusive right to exclude others from making, using, importing, or selling the patented invention for a limited time. Authority for the U.S. patent system derives from Article I, Section 8, Clause 8 of the Constitution, which empowers Congress to secure for limited times to inventors the exclusive right to their discoveries. The Patent Act, 35 U.S.C.
The law of unfair competition encompasses torts that cause economic harm to a business through deceptive or wrongful business practices. It is designed to protect both consumers and businesses from unethical conduct that disrupts fair market competition. The term "unfair competition" can be used both broadly, to describe a wide range of wrongful business practices, and narrowly, to refer specifically to deceptive practices involving consumer confusion.
Does the addition of a generic top-level domain name such as “.com” to a generic term such as “booking” create a protectable trademark, notwithstanding the Lanham Act’s prohibition on registering generic terms as trademarks?
This case asks the Supreme Court to determine whether the addition of a domain suffix such as “.com” to a generic term like “booking” can create a protectable trademark. The Petitioners, United States Patent and Trademark Office and the Department of Justice, contend that the Court’s decision in Goodyear that the addition of a corporate designation such as “Company” or “Inc.” to a generic word does not render the combination protectable, extends to adding a “.com” suffix. The Respondent, Booking.com, counters that the Lanham Act repudiated Goodyear, and advocates for the application of the “primary significance” test which focuses the genericness inquiry on whether the consuming public views the term as signifying the producer rather than the product. The Court’s decision will have implications for online companies that have invested resources in developing their brand recognition using generic terms.
Whether the addition by an online business of a generic top-level domain (“.com”) to an otherwise generic term can create a protectable trademark.
Booking.com manages a website where customers can make travel and lodging reservations. Booking.com B.V. v. USPTO at 5. In 2011 and 2012, Booking.com filed four trademark applications with the U.S. Patent and Trademark Office (“USPTO”) for the use of BOOKING.COM. Id. For trademarks to be protected they have to be distinctive. Id. at 3.
Does the government’s refusal to register a trademark under a provision of trademark law requiring advance consent to use “a name… identifying a particular living individual” violate the Free Speech Clause of the First Amendment, where that trademark criticizes a public figure or government official?
Vidal v. Elster asks whether a federal statute prohibiting the use of a living individual’s name in a trademark without their advance consent violates the Free Speech Clause of the First Amendment. Katherine Vidal, director of the U.S. Patent and Trademark Office, argues that the law does not offend the First Amendment because it is viewpoint-neutral. But even if it did, she contends, the law would stand because it advances the important government interest of protecting individuals’ rights to exploit their identity for profit and protects against false endorsements. Challenging the law is Steve Elster, whose “Trump Too Small” trademark kicked off the dispute. Elster argues that the statute is not content-neutral since its prohibitions are triggered by invoking the specific “content” of an individual’s name. In this way, the rule allegedly differentiates certain speech for more intensive scrutiny by the Patent and Trademark Office. The outcome of this case will have an impact on general rights of publicity and privacy as well as on the freedom of political speech.
Whether the refusal to register a trademark under 15 U.S.C. § 1052(c) violates the free speech clause of the First Amendment when the mark contains criticism of a government official or public figure.
The Lanham Act, enacted July 5, 1946 and codified in 15 U.S.C. §§1051 et seq., governs the application, maintenance and use of “trademarks”––identifiable signs, symbols or distinctions differentiating a product or service from other similar products or services. To qualify for trademark protection under the Lanham Act, this sign or expression must satisfy a number of statutory proscriptions and requirements.
Thanks to Sara Fekkak.
