Trademark
SCOTUS' First Teleconference: USPTO vs. Booking.com
For the first time ever in history, the Supreme Court of the United States (SCOTUS) heard oral arguments via teleconference to abide by the COVID-19 shelter-in-place orders. The first case the justices heard in this new format was U.S. Patent and Trademark Office v. Booking.com, No. 19-46, a trademark case that presented the question of “whether the addition by an online business of a generic top-level domain (“.com”) to an otherwise generic term can create a protectable trademark.”
Under current trademark law, generic terms (i.e., common words used to describe goods or services, such as “car” or “hotel”) cannot be registered as trademarks. Descriptive terms (i.e., words that describe features or qualities of a good or service, such as “ultra-fast” or “fresh”), however, may qualify for trademark protection once it is shown that the mark has acquired a secondary meaning, i.e. consumers have come to associate the mark with a specific source/origin of the good or service.
Specifically, the dispute in this case was over whether using the generic term “booking” in conjunction with the general domain “.com” allowed for the term “BOOKING.COM” to be afforded trademark protection for the company Booking.com, i.e., a travel company that allows users to make various travel reservations via its platform. The United States Patent and Trademark Office (USPTO) held that the terms, even when used together, were generic and therefore not applicable for trademark protection. The 4th U.S. Circuit Court of Appeals, however, sided with the company as it found that customers have come to associate the website with the company’s brand. The Supreme Court agreed to review the decision on appeal.
Erica Ross, representing the USPTO, relied on the 1888 Supreme Court decision, Goodyear’s India Rubber Glove v. Goodyear Rubber Co., 128 U.S. 598 (1888), which held that the combination of a generic term with a corporate designation such as “Company” did not create a protectable trademark. She drew the comparison that the general domain “.com” was similar to corporate designations and thus fell under the long-standing principle that generic terms cannot be protected as trademarks.
Lisa Blatt, arguing on behalf of Booking.com argued that when congress passed the Lanham Act, it repudiated the 1888 case in favor of a rule that asks what consumers believe that a term signifies. Specifically, the statute tells the USPTO and the courts to determine whether a term is generic by examining the “primary significance” of that term to consumers.
During the teleconference, the justices spoke in order of seniority. Justice Clarence Thomas, who seldom ever asks questions, ask two questions during the teleconference. Thomas first asked Ross to explain why, if businesses could register trademarks that incorporate generic terms into 1-800 telephone numbers, the same rule shouldn’t apply to internet domain names. Ross stated that the given the federal circuit had ruled that 1-800 telephone numbers may incorporate generic names and given that, the USPTO was obliged to follow that ruling. Justice Thomas then asked Blatt if there was any other rule other than the “primary significance test” that spoke to why her client should prevailed. Blatt replied by pointing to other sections of the Lanham Act that overruled any other per se rule that would ignore consumer’s expectation when deciding whether or not a mark deserves trademark protection.
Ultimately, it appeared that justices’ questions suggested that a majority of them would like to find a middle ground that draws a coherent line between generic and merely descriptive terms and makes good policy sense.
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Patent
Apple wins against Zomm Over Emergency SOS Patent
In a legal battle between Apple and Zomm LLC, Apple has recently come out on top when the PTAB ruled that Zomm LLC’s U.S. Patent No. 8,351,895 (‘895 patent), which allows wireless devices to connect to mobile phones and initiate an emergency services call, was obvious and therefore invalid.
Specifically, Zomm LLC’s ‘895 patent consisted of a wireless device that had the ability to initiate a local emergency call using a pre-recorded message either via stored data on the device to detect which local authorities to call or via connection to external hard drives or devices.
Zomm LLC had initiated a lawsuit against Apple for multiple causes of action, including one for violating the ‘895 patent patent when Apple used similar technology in its Apple Watch, which has the ability to initiate an emergency call if the watch detects an emergency. The PTAB board held, however, that prior art or prior patents and technology deemed this patent obvious and denied Zoom’s request to amend the invalidated claims. Although the PTAB found that Zomm met the statutory requirements for amendment, it stated that Apple was able to show the proposed substitute claims would have been obvious to a skilled artisan.
Although this patent has been deemed invalid, Zomm has filed another amended compliant in district court where the case currently resides with Judge Haywood S. Gilliam Jr.
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Clorox & Lysol: How Clean are They When it Comes to Patents?
On Friday, Perimeter Brand Packaging LLC (Perimeter) sued the maker of Lysol Disinfecting Wipes, Reckitt Benckiser LLC (RB), for stealing its patented packaging technology that keeps its wipe moist.
Perimeter holds U.S. Patent Nos. 7,703,621 and 8,297,461, that are design patents for a canister that is able to retain liquid and keep wipes moist. Perimeter had licensed this patent previously to Clorox Co. until 2015 when Clorox started to utilize its own design that did not infringe upon Perimeter’s.
In Perimeter’s compliant, it uses Clorox’s 2015 disinfecting wipes container to demonstrate the similarities between its design patents and Lysol’s. Additionally, Perimeter hired a research firm in 2018 that confirmed that Lysol’s design had infringed upon its patents. Subsequently, Perimeter had sent several letters to RB requesting it license its patents, which RB refused.
Given COVID-19 pandemic, Lysol has seen the sales of sanitizing wipes more than double in the past two months as per market research firm Nielsen Corp. Perimeter's suit seeks damages in compensation for RB's alleged patent infringement, as well as treble damages and an injunction preventing continued infringement.
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Copyright
Michael Jordan’s Tequila Company, Cincoro, Sued for Copyright Infringement
Anais Ganouna, a commercial photographer, filed a lawsuit against Cincoro Spirts Group (Cincoro), a tequila company partly owned by Michael Jordan, for infringing on her copyright by allegedly using several of her photos on Cincoro’s website without a license.
Specifically, the compliant states that Anais and her company (Frank & Anaïs, LLC) were commissioned through an ad agency, The Colors You Like LLC (TCYL), to conduct a photo shoot of Cincoro’ agave fields and tequila production process for use in Cincoro’s website and online marketing. Before commencing the shoot, TCYL agreed to pay Anais a discounted daily rate for her time and labor. No specific licensing/usage of Anais photographs were discussed, which Anais believed were to be negotiated later.
Upon completing the photo shoot, Anais attempted to negotiate a licensing fee (approximately $114,433 for 15 photos), which TCYL and Cincoro refused to pay. As per an array of text messages and emails, TYCL stated that it was not interested in using Anais’ photos given the break down in negotiations.
Upon launch of Cincoro’s website in September 2019, Anais discovered that her photos were being used despite the refusal to pay the licensing fees. Anais subsequently filed a lawsuit against TYCL and Cincoro for injunctive relief and damages.
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