Thanks Anne. All, here is the link to the actual decision: https://www.law360.com/dockets/download/5efb47347da17405e86713cb?doc_url=htt.... The Supreme Court strikes down the USPTO’s per se rule against allowing trademark registration for generic term + trademark. Justice Ginsburg does a great job of pointing out why people who are worried about a competitor no longer being able to use the generic word (e.g. claims that there would be a monopoly on such a term) have nothing to fear. It’s a great read. I wish we could get her on one of our calls! The same is, of course, true in ICANNland – a so-called closed generic for .hammers would not stop anyone from using “hammers” to identify hammers. And, just like the for the USPTO, a per se rule against them makes no sense. This is, no doubt, why the ICANN Board deferred the 2012 closed generic applications to the upcoming round and asked us to develop policy to deal with those deferred applications. I remain hopeful, against all nay saying to the contrary, that we can still eek out some policy here as the Board asked us to do. Best to all, Paul To receive regular COVID-19 updates from Taft, subscribe here<https://www.taftlaw.com/general/subscribe>. For additional resources, visit Taft's COVID-19 Resource Toolkit<https://www.taftlaw.com/general/coronavirus-covid-19-resource-toolkit>. This message may contain information that is attorney-client privileged, attorney work product or otherwise confidential. If you are not an intended recipient, use and disclosure of this message are prohibited. If you received this transmission in error, please notify the sender by reply e-mail and delete the message and any attachments. From: Gnso-newgtld-wg <gnso-newgtld-wg-bounces@icann.org> On Behalf Of Aikman-Scalese, Anne Sent: Tuesday, June 30, 2020 7:12 PM To: gnso-newgtld-wg@icann.org Subject: [Gnso-newgtld-wg] FW: Client Alert - Supreme Court Finds BOOKING.COM Non-Generic And Capable Of Federal Trademark Registration Dear WG members, Just in case anyone on the list is wondering about the US Supreme Court decision in the booking.com trademark case that Paul and I were discussing on the list, please see attached summary. Again, my view is this is a “secondary meaning” case with uncontested evidence that consumers recognized the domain as a source indicator of the owner’s services. Thank you, Anne Anne E. Aikman-Scalese Of Counsel 520.629.4428 office AAikman@lrrc.com<mailto:AAikman@lrrc.com> _____________________________ [cid:image001.png@01D64F28.74F333B0] Lewis Roca Rothgerber Christie LLP One South Church Avenue, Suite 2000 Tucson, Arizona 85701-1611 lrrc.com<http://lrrc.com/> ________________________________ This message and any attachments are intended only for the use of the individual or entity to which they are addressed. If the reader of this message or an attachment is not the intended recipient or the employee or agent responsible for delivering the message or attachment to the intended recipient you are hereby notified that any dissemination, distribution or copying of this message or any attachment is strictly prohibited. If you have received this communication in error, please notify us immediately by replying to the sender. The information transmitted in this message and any attachments may be privileged, is intended only for the personal and confidential use of the intended recipients, and is covered by the Electronic Communications Privacy Act, 18 U.S.C. §2510-2521.
