Re: [Gnso-newgtld-wg] Client Alert - Supreme Court Finds BOOKING.COM Non-Generic And Capable Of Federal Trademark Registrat
Thanks Marc. By the way, my name is spelled “Anne”. You are equating a domain name registration held to have acquired secondary meaning with a proposed TLD in business to sell domain names. The question in the case was not whether there was any anti-competitive effect. It was whether it was a source indicator. A TLD is not a trademark and it’s tough to see why you think “acquired distinctiveness” applies to a proposed Closed Generic TLD. This is especially true since the only acquired distinctiveness would have to be in relation to operating a registry and authorizing the sale of domain names, not acquired distinctiveness in relation to the common meaning of the generic term. AnnE From: trachtenbergm@gtlaw.com <trachtenbergm@gtlaw.com> Sent: Wednesday, July 8, 2020 1:15 PM To: Aikman-Scalese, Anne <AAikman@lrrc.com>; PMcGrady@taftlaw.com; alexander@schubert.berlin; gnso-newgtld-wg@icann.org Subject: RE: [Gnso-newgtld-wg] Client Alert - Supreme Court Finds BOOKING.COM Non-Generic And Capable Of Federal Trademark Registration [EXTERNAL] ________________________________ Ann, You are responding to arguments that I didn’t make including that the owner of booking.com has a Legal Rights Objection against the possible delegation of .booking. The point is that this case supports that there is no anti-competitive effect or harm from one company owning a domain name consisting of a term that is generic in another context, which I think extends to ownership of a TLD consisting of a term that is generic in another context, and we have yet to see any evidence to the contrary that there is such harm other than the opinions of certain working group members. Marc H. Trachtenberg Shareholder Greenberg Traurig, LLP | 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 Tel 312.456.1020 Mobile 773.677.3305 trac@gtlaw.com<mailto:trac@gtlaw.com> | www.gtlaw.com<http://www.gtlaw.com/> [Greenberg Traurig] From: Aikman-Scalese, Anne [mailto:AAikman@lrrc.com] Sent: Wednesday, July 8, 2020 2:49 PM To: Trachtenberg, Marc H. (Shld-Chi-IP-Tech) <trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>>; PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>; alexander@schubert.berlin<mailto:alexander@schubert.berlin>; gnso-newgtld-wg@icann.org<mailto:gnso-newgtld-wg@icann.org> Subject: RE: [Gnso-newgtld-wg] Client Alert - Supreme Court Finds BOOKING.COM Non-Generic And Capable Of Federal Trademark Registration Marc, If the argument is based on the booking.com case, then a .generic closed TLD has to acquire secondary meaning before it can be afforded a trademark registration. And it has to acquire secondary meaning for the particular services it renders, which is odd in and of itself since the services it renders are the operation of the domain itself and NOT necessarily the services indicated by the generic term so go figure as to the real relationship between secondary meaning trademark law and TLDs. Don’t everybody run to the USPTO at the same time to try to register “.runway” for registry services for a closed TLD, whether you mean for airplane runways or modeling runways. There are lots of applications and registrations for that word already. And the owner of the Closed Generic for .runway is not necessarily known for either one, but could become known for running a TLD where third parties want to buy the second level domain. So the registry isn’t acquiring secondary meaning in the .runway TLD for runway services. Rather it may be able to show that it is adopting a fanciful name for TLD registry services. This is one of the reasons I say the booking.com case is about US acquired secondary meaning trademark law, not about ICANN policy on Closed Generic registries. Don’t think for a minute that the SCOTUS decision means that the owner of booking.com has a Legal Rights Objection against the possible delegation of .booking. Anne From: trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com> <trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>> Sent: Wednesday, July 8, 2020 11:38 AM To: Aikman-Scalese, Anne <AAikman@lrrc.com<mailto:AAikman@lrrc.com>>; PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>; alexander@schubert.berlin<mailto:alexander@schubert.berlin>; gnso-newgtld-wg@icann.org<mailto:gnso-newgtld-wg@icann.org> Subject: RE: [Gnso-newgtld-wg] Client Alert - Supreme Court Finds BOOKING.COM Non-Generic And Capable Of Federal Trademark Registration [EXTERNAL] ________________________________ Ann, While it is true that the registry (technically through registrars) would be selling multiple second level domain name registrations to thousands of different business sources of goods and services, the critical aspect is that every one of those second level domains would emanate from a single source – the registry. There is no other place to get a second level in the “generic” TLD except from the registry. And the registry can have quality control on each of the domains in the form of registration and/or use requirements. A trademark is a source indicator and in this context, the fact that second level sits atop the “generic” TLD indicates that it emanates from a single source the registry. And it doesn’t matter if the consuming public knows who the registry operator is. Trademark law is clear that the trademark must simply communicate that the good or service emanates from a single source, not identify the specific source. Accordingly, in that sense the “generic” TLD is not generic at all and is like booking.com. The businesses using the second level might be using the second level in connection with their business but that does not take away from the potential source indicating function of the TLD in the same way that if Burger King uses Sony TVs to display its branded BK menu it does not take away from the source indicating function of the SONY mark on the TV. Best regards, Marc H. Trachtenberg Shareholder Greenberg Traurig, LLP | 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 Tel 312.456.1020 Mobile 773.677.3305 trac@gtlaw.com<mailto:trac@gtlaw.com> | www.gtlaw.com<http://www.gtlaw.com/> [Greenberg Traurig] From: Gnso-newgtld-wg [mailto:gnso-newgtld-wg-bounces@icann.org] On Behalf Of Aikman-Scalese, Anne Sent: Wednesday, July 8, 2020 11:59 AM To: McGrady, Paul D. <PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>>; alexander@schubert.berlin<mailto:alexander@schubert.berlin>; gnso-newgtld-wg@icann.org<mailto:gnso-newgtld-wg@icann.org> Subject: Re: [Gnso-newgtld-wg] Client Alert - Supreme Court Finds BOOKING.COM Non-Generic And Capable Of Federal Trademark Registration *EXTERNAL TO GT* Paul, Your reference to the booking.com ruling as something that “shreds the notion that generic terms somehow cause competitive harm” is surprising to me. The US Supreme Court Ruling concluded, based on evidence below, that booking.com was NOT generic. It’s a secondary meaning case in which the evidence below clearly demonstrated that the consuming public associates the booking.com site with a SINGLE SOURCE indicator of certain services and related reputation in the marketplace. In so holding, the court rejected the USPTO practice of always denying registration to a generic term in combination with .com. Putting aside the question of having US law on secondary meaning govern ICANN policy, I don’t quite understand why you maintain that a generic TLD with multiple second level domain registrations could somehow become a “single source” indicator of quality and service. In other words, booking.com is a particular source of booking services that provides certain guarantees, payment policies, reputation for quality etc. on which consumers rely. Since you make references to a “pre-trademark”, you seem to be saying that a closed generic TLD could eventually operate as a trademark for a “single source” indicator after acquiring secondary meaning in the marketplace, even though the registry would be selling multiple second level domain name registrations to thousands of different business sources of goods and services. Could you please elaborate on your reasoning? Is this about full quality control by the Registry of goods and services being offered under a particular Closed Generic TLD and is that the basis of your argument for the Public Interest being served? For those who may not have time to read the full decision, I have tried to pull out the “nut” of the basis for the holding in the text pasted below. It’s definitely a secondary meaning case and the ruling was that booking.com is NOT generic but is rather a source-indicating trademark via acquired distinctiveness. The Supreme Court affirmed the 4th Circuit and the lower federal district court findings in this regard. The text describing those findings is pasted below. Anne “Relying in significant part on Booking.com’s new evidence of consumer perception, the District Court concluded that “Booking.com”—unlike “booking”—is not generic. The “consuming public,” the court found, “primarily understands that BOOKING.COM does not refer to a genus, rather it is descriptive of services involving ‘booking’ available at that domain name.” Book-ing.com B.V. v. Matal, 278 F. Supp. 3d 891, 918 (2017). Having determined that “Booking.com” is descriptive, the District Court additionally found that the term has acquired secondary meaning as to hotel-reservation services. For those services, the District Court therefore concluded, Booking.com’s marks meet the distinctiveness requirement for registration. The PTO appealed only the District Court’s determination that “Booking.com” is not generic. Finding no error in the District Court’s assessment of how consumers perceived the term “Booking.com,” the Court of Appeals for the Fourth Circuit affirmed the court of first instance’s judgment. In so ruling, the appeals court rejected the PTO’s contention that the combination of “.com” with a generic term like “booking” “is necessarily generic.” 915 F. 3d 171, 184 (2019).” From: Gnso-newgtld-wg <gnso-newgtld-wg-bounces@icann.org<mailto:gnso-newgtld-wg-bounces@icann.org>> On Behalf Of McGrady, Paul D. Sent: Wednesday, July 8, 2020 6:31 AM To: alexander@schubert.berlin<mailto:alexander@schubert.berlin>; gnso-newgtld-wg@icann.org<mailto:gnso-newgtld-wg@icann.org> Subject: Re: [Gnso-newgtld-wg] Client Alert - Supreme Court Finds BOOKING.COM Non-Generic And Capable Of Federal Trademark Registration [EXTERNAL] ________________________________ Thanks Alexander. I am not making that argument and so won’t address your variant of an argument I’m not making. The point of the booking.com decision is that it shreds the arguments that <. + generic term> TLDs will somehow cause a competitive harm. Shreds. Best, Paul From: Gnso-newgtld-wg <gnso-newgtld-wg-bounces@icann.org<mailto:gnso-newgtld-wg-bounces@icann.org>> On Behalf Of Alexander Schubert Sent: Thursday, July 2, 2020 10:48 AM To: gnso-newgtld-wg@icann.org<mailto:gnso-newgtld-wg@icann.org> Subject: Re: [Gnso-newgtld-wg] Client Alert - Supreme Court Finds BOOKING.COM Non-Generic And Capable Of Federal Trademark Registration Paul, I don’t understand: Are you arguing that because Booking.com won the right to deny third parties using the letter combination “booking.com” in connotation with hotel booking services an applicant for a generic string based gTLD could deny public access to the new gTLD namespace? Question: In your opinion; if the domain registration for booking.com would expire, could Booking.com deny the new registrant from offering hotel booking services on a website to which the domain routes – based on their “booking.com” TM (once they have it)? Thanks, Alexander From: Gnso-newgtld-wg [mailto:gnso-newgtld-wg-bounces@icann.org] On Behalf Of McGrady, Paul D. Sent: Donnerstag, 2. Juli 2020 18:13 To: Justine Chew <justine.chew@gmail.com<mailto:justine.chew@gmail.com>>; Rubens Kuhl <rubensk@nic.br<mailto:rubensk@nic.br>> Cc: gnso-newgtld-wg@icann.org<mailto:gnso-newgtld-wg@icann.org> Subject: Re: [Gnso-newgtld-wg] Client Alert - Supreme Court Finds BOOKING.COM Non-Generic And Capable Of Federal Trademark Registration Thanks Justine. Understood. And to be clear, SCOTUS doesn’t address our exact debate (although we are mentioned in the one-man dissent but in that dissent Justice Breyer specifically mentions how new gTLD registries are building brand awareness for their brands, e.g. .club – so again helpful to those who believe <.+generic term> TLDs should remain available as they were in the AGB2012 Guidebook), it just dispatched the fear-of-not-being-able-to-use-the-term argument upon which the <anti-.+ generic term> have built their case and generally takes a big swing at per se rules. Lucky timing, since it gives this WG another chance to actually make Policy as the Board asked us to do rather than just saying “we don’t know.” I understand why those whose position is essentially vitiated by this SCOTUS decision want to push hard to get the topic removed from discussion now that this case it out. Even so, hopefully the Co-chairs will give this the time it was promised. Best, Paul From: Justine Chew <justine.chew@gmail.com<mailto:justine.chew@gmail.com>> Sent: Wednesday, July 1, 2020 11:44 PM To: Rubens Kuhl <rubensk@nic.br<mailto:rubensk@nic.br>>; McGrady, Paul D. <PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>> Cc: gnso-newgtld-wg@icann.org<mailto:gnso-newgtld-wg@icann.org> Subject: Re: [Gnso-newgtld-wg] Client Alert - Supreme Court Finds BOOKING.COM Non-Generic And Capable Of Federal Trademark Registration Paul, I wasn't suggesting we dismiss what SCOTUS said, but as we well know, there could be room to distinguish court decisions. But I will read the SCOTUS judgment, thanks to you. Rubens, sorry to not be helpful here - I don't know - but it's not inconceivable to me that a (supreme) court of a different jurisdiction may choose to hold a different view. Kind regards, Justine --- On Thu, 2 Jul 2020 at 11:53, Rubens Kuhl <rubensk@nic.br<mailto:rubensk@nic.br>> wrote: Is there a position on generic trademarks in general from WIPO ? Rubens On 2 Jul 2020, at 00:05, Justine Chew <justine.chew@gmail.com<mailto:justine.chew@gmail.com>> wrote: Hi Paul, thanks for the pdf. I can't help but to wonder what might happen if a (supreme) court of another jurisdiction were to hold a different view. Kind regards, Justine --- On Thu, 2 Jul 2020 at 10:49, McGrady, Paul D. <PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>> wrote: Thanks Justine. I’ve attached a PDF for you. I’m not familiar with the contents of the other commentary article you mention, but I think the actual opinion by Ginsburg makes it clear that the per se rule is quite abolished at the USPTO. The Justice writes: “The PTO’s principal concern is that trademark protection for a term like “Booking.com<https://urldefense.com/v3/__http:/booking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoKbDIN6Nn7s6jAedq1tu8kIGCdfddt5BrgvsLbd3ChyMOVDDD3QvBsFY$>” would hinder competitors. But the PTO does not assert that others seeking to offer online hotel-reservation services need to call their services “Booking.com<https://urldefense.com/v3/__http:/booking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoKbDIN6Nn7s6jAedq1tu8kIGCdfddt5BrgvsLbd3ChyMOVDDD3QvBsFY$>.” Rather, the PTO fears that trademark protection for “Booking.com<https://urldefense.com/v3/__http:/booking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoKbDIN6Nn7s6jAedq1tu8kIGCdfddt5BrgvsLbd3ChyMOVDDD3QvBsFY$>” could exclude or inhibit competitors from using the term “booking” or adopting domain names like “ebooking.com<https://urldefense.com/v3/__http:/ebooking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoKbDIN6Nn7s6jAedq1tu8kIGCdfddt5BrgvsLbd3ChyMOVDDDxlo9Go0$>” or “hotel-booking.com<https://urldefense.com/v3/__http:/hotel-booking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoKbDIN6Nn7s6jAedq1tu8kIGCdfddt5BrgvsLbd3ChyMOVDDDcbI2aE4$>.” Brief for Petitioners 27–28. The PTO’s objection, therefore, is not to exclusive use of “Booking.com<https://urldefense.com/v3/__http:/booking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoKbDIN6Nn7s6jAedq1tu8kIGCdfddt5BrgvsLbd3ChyMOVDDD3QvBsFY$>” as a mark, but to undue control over similar language, i.e., “booking,” that others should remain free to use. That concern attends any descriptive mark. Responsive to it, trademark law hems in the scope of such marks short of denying trademark protection altogether. Notably, a competitor’s use does not infringe a mark unless it is likely to confuse consumers. See §§1114(1), 1125(a)(1)(A); 4 McCarthy §23:1.50 (collecting state law). In assessing the likelihood of confusion, courts consider the mark’s distinctiveness: “The weaker a mark, the fewer are the junior uses that will trigger a likelihood of consumer confusion.” 2 id., §11:76. When a mark incorporates generic or highly descriptive components, consumers are less likely to think that other uses of the common element emanate from the mark’s owner. Ibid. Similarly, “[i]n a ‘crowded’ field of look-alike marks” (e.g., hotel names including the word “grand”), consumers “may have learned to carefully pick out” one mark from another. Id., §11:85. And even where some consumer confusion exists, the doctrine known as classic fair use, see id., §11:45, protects from liability anyone who uses a descriptive term, “fairly and in good faith” and “otherwise than as a mark,” merely to describe her own goods. 15 U. S. C. §1115(b)(4); see KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U. S. 111, 122–123 (2004). These doctrines guard against the anticompetitive effects the PTO identifies, ensuring that registration of “Booking.com<https://urldefense.com/v3/__http:/booking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoKbDIN6Nn7s6jAedq1tu8kIGCdfddt5BrgvsLbd3ChyMOVDDD3QvBsFY$>” would not yield its holder a monopoly on the term “booking.” Booking.com<https://urldefense.com/v3/__http:/booking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoKb...> concedes that “Booking.com<https://urldefense.com/v3/__http:/booking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoKbDIN6Nn7s6jAedq1tu8kIGCdfddt5BrgvsLbd3ChyMOVDDD3QvBsFY$>” would be a “weak” mark. Tr. of Oral Arg. 66. See also id., at 42–43, 55. The mark is descriptive, Booking.com<https://urldefense.com/v3/__http:/booking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoKb...> recognizes, making it “harder . . . to show a likelihood of confusion.” Id., at 43. Furthermore, because its mark is one of many “similarly worded marks,” Booking.com<https://urldefense.com/v3/__http:/booking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoKb...> accepts that close variations are unlikely to infringe. Id., at 66. And Booking.com<https://urldefense.com/v3/__http:/booking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoKb...> acknowledges that federal registration of “Booking.com<https://urldefense.com/v3/__http:/booking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoKbDIN6Nn7s6jAedq1tu8kIGCdfddt5BrgvsLbd3ChyMOVDDD3QvBsFY$>” would not prevent competitors from using the word “booking” to describe their own services. Id., at 55.” So, those against <.+ generic term> TLDs are going to have to find some other basis to argue that there will be some sort of harm. This leaves the opponents with (1) being against them because they didn’t apply but their competitors did; (2) they are a registrar that can’t make any money on them; (3) a bias against free speech; (4) a bias against nascent trademarks. None of these are nearly as noble sounding as the fear about competitive harm, but Ginsburg has nicely dispatched that fear. Sure would be nice if the Co-chairs would allow more time, as initially promised, so that we can develop some policy. This decision by SCOTUS is very instructive and we should take the time to understand it and build guardrails around the <.+ generic term> TLDs instead of just throwing our hands up and sending nothing the Board instead of the something they asked us for. Best, Paul From: Justine Chew <justine.chew@gmail.com<mailto:justine.chew@gmail.com>> Sent: Wednesday, July 1, 2020 8:51 PM To: McGrady, Paul D. <PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>> Cc: Aikman-Scalese, Anne <AAikman@lrrc.com<mailto:AAikman@lrrc.com>>; gnso-newgtld-wg@icann.org<mailto:gnso-newgtld-wg@icann.org> Subject: Re: [Gnso-newgtld-wg] Client Alert - Supreme Court Finds BOOKING.COM<https://urldefense.com/v3/__http:/booking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoKb...> Non-Generic And Capable Of Federal Trademark Registration Hi Paul, The link you offered is one behind a paywall, so not very useful for me as a non-subscriber. But I note that Winterfeldt IP Group has also released a client advisory which points to uncertainty and important element(s) not raised in the appeal and therefore not considered by SCOTUS. Kind regards, Justine --- On Wed, 1 Jul 2020 at 10:51, McGrady, Paul D. <PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>> wrote: Thanks Anne. All, here is the link to the actual decision: https://www.law360.com/dockets/download/5efb47347da17405e86713cb?doc_url=https%3A%2F%2Fwww.supremecourt.gov%2Fopinions%2F19pdf%2F19-46_8n59.pdf&label=Opinion<https://urldefense.com/v3/__https:/www.law360.com/dockets/download/5efb47347da17405e86713cb?doc_url=https*3A*2F*2Fwww.supremecourt.gov*2Fopinions*2F19pdf*2F19-46_8n59.pdf&label=Opinion__;JSUlJSUl!!DUT_TFPxUQ!Wzo-NoIXhLvoKbDIN6Nn7s6jAedq1tu8kIGCdfddt5BrgvsLbd3ChyMOVDDDt-3VfdQ$>. 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://urldefense.com/v3/__https:/www.taftlaw.com/general/subscribe__;!!DUT...>. For additional resources, visit Taft's COVID-19 Resource Toolkit<https://urldefense.com/v3/__https:/www.taftlaw.com/general/coronavirus-covid...>. 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<mailto: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<mailto:gnso-newgtld-wg@icann.org> Subject: [Gnso-newgtld-wg] FW: Client Alert - Supreme Court Finds BOOKING.COM<https://urldefense.com/v3/__http:/booking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoKb...> 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<https://urldefense.com/v3/__http:/booking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoKb...> 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> _____________________________ <image001.png> Lewis Roca Rothgerber Christie LLP One South Church Avenue, Suite 2000 Tucson, Arizona 85701-1611 lrrc.com<https://urldefense.com/v3/__http:/lrrc.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoKbDIN...> ________________________________ 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. 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AnnE, A TLD is not inherently a trademark just like a second level domain is not inherently one but there is no reason that it could not acquire distinctiveness and become one. You make my point when you say that the TLD could acquire distinctiveness in relation to operating a registry and authorizing the sale of domain names. However I don’t understand why you preference the point by saying “only” as if operating a registry and authorizing the sale of domain names is somehow less worthy of trademark protection than other goods or services. Marc H. Trachtenberg Shareholder Greenberg Traurig, LLP | 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 Tel 312.456.1020 Mobile 773.677.3305 trac@gtlaw.com<mailto:trac@gtlaw.com> | http://www.gtlaw.com<http://www.gtlaw.com/> [Greenberg Traurig] From: Aikman-Scalese, Anne [mailto:AAikman@lrrc.com] Sent: Wednesday, July 8, 2020 4:19 PM To: Trachtenberg, Marc H. (Shld-Chi-IP-Tech) <trachtenbergm@gtlaw.com>; PMcGrady@taftlaw.com; alexander@schubert.berlin; gnso-newgtld-wg@icann.org Subject: RE: [Gnso-newgtld-wg] Client Alert - Supreme Court Finds https://urldefense.com/v3/__http://BOOKING.COM__;!!DUT_TFPxUQ!TkxB2FPyM1jK-V... Non-Generic And Capable Of Federal Trademark Registrat Thanks Marc. By the way, my name is spelled “Anne”. You are equating a domain name registration held to have acquired secondary meaning with a proposed TLD in business to sell domain names. The question in the case was not whether there was any anti-competitive effect. It was whether it was a source indicator. A TLD is not a trademark and it’s tough to see why you think “acquired distinctiveness” applies to a proposed Closed Generic TLD. This is especially true since the only acquired distinctiveness would have to be in relation to operating a registry and authorizing the sale of domain names, not acquired distinctiveness in relation to the common meaning of the generic term. AnnE From: trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com> <trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>> Sent: Wednesday, July 8, 2020 1:15 PM To: Aikman-Scalese, Anne <AAikman@lrrc.com<mailto:AAikman@lrrc.com>>; PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>; alexander@schubert.berlin<mailto:alexander@schubert.berlin>; gnso-newgtld-wg@icann.org<mailto:gnso-newgtld-wg@icann.org> Subject: RE: [Gnso-newgtld-wg] Client Alert - Supreme Court Finds https://urldefense.com/v3/__http://BOOKING.COM__;!!DUT_TFPxUQ!TkxB2FPyM1jK-V... Non-Generic And Capable Of Federal Trademark Registration [EXTERNAL] ________________________________ Ann, You are responding to arguments that I didn’t make including that the owner of https://urldefense.com/v3/__http://booking.com__;!!DUT_TFPxUQ!TkxB2FPyM1jK-V... has a Legal Rights Objection against the possible delegation of .booking. The point is that this case supports that there is no anti-competitive effect or harm from one company owning a domain name consisting of a term that is generic in another context, which I think extends to ownership of a TLD consisting of a term that is generic in another context, and we have yet to see any evidence to the contrary that there is such harm other than the opinions of certain working group members. Marc H. Trachtenberg Shareholder Greenberg Traurig, LLP | 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 Tel 312.456.1020 Mobile 773.677.3305 trac@gtlaw.com<mailto:trac@gtlaw.com> | http://www.gtlaw.com<http://www.gtlaw.com/> [Greenberg Traurig] From: Aikman-Scalese, Anne [mailto:AAikman@lrrc.com] Sent: Wednesday, July 8, 2020 2:49 PM To: Trachtenberg, Marc H. (Shld-Chi-IP-Tech) <trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>>; PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>; alexander@schubert.berlin<mailto:alexander@schubert.berlin>; gnso-newgtld-wg@icann.org<mailto:gnso-newgtld-wg@icann.org> Subject: RE: [Gnso-newgtld-wg] Client Alert - Supreme Court Finds https://urldefense.com/v3/__http://BOOKING.COM__;!!DUT_TFPxUQ!TkxB2FPyM1jK-V... Non-Generic And Capable Of Federal Trademark Registration Marc, If the argument is based on the https://urldefense.com/v3/__http://booking.com__;!!DUT_TFPxUQ!TkxB2FPyM1jK-V... case, then a .generic closed TLD has to acquire secondary meaning before it can be afforded a trademark registration. And it has to acquire secondary meaning for the particular services it renders, which is odd in and of itself since the services it renders are the operation of the domain itself and NOT necessarily the services indicated by the generic term so go figure as to the real relationship between secondary meaning trademark law and TLDs. Don’t everybody run to the USPTO at the same time to try to register “.runway” for registry services for a closed TLD, whether you mean for airplane runways or modeling runways. There are lots of applications and registrations for that word already. And the owner of the Closed Generic for .runway is not necessarily known for either one, but could become known for running a TLD where third parties want to buy the second level domain. So the registry isn’t acquiring secondary meaning in the .runway TLD for runway services. Rather it may be able to show that it is adopting a fanciful name for TLD registry services. This is one of the reasons I say the https://urldefense.com/v3/__http://booking.com__;!!DUT_TFPxUQ!TkxB2FPyM1jK-V... case is about US acquired secondary meaning trademark law, not about ICANN policy on Closed Generic registries. Don’t think for a minute that the SCOTUS decision means that the owner of https://urldefense.com/v3/__http://booking.com__;!!DUT_TFPxUQ!TkxB2FPyM1jK-V... has a Legal Rights Objection against the possible delegation of .booking. Anne From: trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com> <trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>> Sent: Wednesday, July 8, 2020 11:38 AM To: Aikman-Scalese, Anne <AAikman@lrrc.com<mailto:AAikman@lrrc.com>>; PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>; alexander@schubert.berlin<mailto:alexander@schubert.berlin>; gnso-newgtld-wg@icann.org<mailto:gnso-newgtld-wg@icann.org> Subject: RE: [Gnso-newgtld-wg] Client Alert - Supreme Court Finds https://urldefense.com/v3/__http://BOOKING.COM__;!!DUT_TFPxUQ!TkxB2FPyM1jK-V... Non-Generic And Capable Of Federal Trademark Registration [EXTERNAL] ________________________________ Ann, While it is true that the registry (technically through registrars) would be selling multiple second level domain name registrations to thousands of different business sources of goods and services, the critical aspect is that every one of those second level domains would emanate from a single source – the registry. There is no other place to get a second level in the “generic” TLD except from the registry. And the registry can have quality control on each of the domains in the form of registration and/or use requirements. A trademark is a source indicator and in this context, the fact that second level sits atop the “generic” TLD indicates that it emanates from a single source the registry. And it doesn’t matter if the consuming public knows who the registry operator is. Trademark law is clear that the trademark must simply communicate that the good or service emanates from a single source, not identify the specific source. Accordingly, in that sense the “generic” TLD is not generic at all and is like https://urldefense.com/v3/__http://booking.com__;!!DUT_TFPxUQ!TkxB2FPyM1jK-V... . The businesses using the second level might be using the second level in connection with their business but that does not take away from the potential source indicating function of the TLD in the same way that if Burger King uses Sony TVs to display its branded BK menu it does not take away from the source indicating function of the SONY mark on the TV. Best regards, Marc H. Trachtenberg Shareholder Greenberg Traurig, LLP | 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 Tel 312.456.1020 Mobile 773.677.3305 trac@gtlaw.com<mailto:trac@gtlaw.com> | http://www.gtlaw.com<http://www.gtlaw.com/> [Greenberg Traurig] From: Gnso-newgtld-wg [mailto:gnso-newgtld-wg-bounces@icann.org] On Behalf Of Aikman-Scalese, Anne Sent: Wednesday, July 8, 2020 11:59 AM To: McGrady, Paul D. <PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>>; alexander@schubert.berlin<mailto:alexander@schubert.berlin>; gnso-newgtld-wg@icann.org<mailto:gnso-newgtld-wg@icann.org> Subject: Re: [Gnso-newgtld-wg] Client Alert - Supreme Court Finds https://urldefense.com/v3/__http://BOOKING.COM__;!!DUT_TFPxUQ!TkxB2FPyM1jK-V... Non-Generic And Capable Of Federal Trademark Registration *EXTERNAL TO GT* Paul, Your reference to the https://urldefense.com/v3/__http://booking.com__;!!DUT_TFPxUQ!TkxB2FPyM1jK-V... ruling as something that “shreds the notion that generic terms somehow cause competitive harm” is surprising to me. The US Supreme Court Ruling concluded, based on evidence below, that https://urldefense.com/v3/__http://booking.com__;!!DUT_TFPxUQ!TkxB2FPyM1jK-V... was NOT generic. It’s a secondary meaning case in which the evidence below clearly demonstrated that the consuming public associates the https://urldefense.com/v3/__http://booking.com__;!!DUT_TFPxUQ!TkxB2FPyM1jK-V... site with a SINGLE SOURCE indicator of certain services and related reputation in the marketplace. In so holding, the court rejected the USPTO practice of always denying registration to a generic term in combination with .com. Putting aside the question of having US law on secondary meaning govern ICANN policy, I don’t quite understand why you maintain that a generic TLD with multiple second level domain registrations could somehow become a “single source” indicator of quality and service. In other words, https://urldefense.com/v3/__http://booking.com__;!!DUT_TFPxUQ!TkxB2FPyM1jK-V... is a particular source of booking services that provides certain guarantees, payment policies, reputation for quality etc. on which consumers rely. Since you make references to a “pre-trademark”, you seem to be saying that a closed generic TLD could eventually operate as a trademark for a “single source” indicator after acquiring secondary meaning in the marketplace, even though the registry would be selling multiple second level domain name registrations to thousands of different business sources of goods and services. Could you please elaborate on your reasoning? Is this about full quality control by the Registry of goods and services being offered under a particular Closed Generic TLD and is that the basis of your argument for the Public Interest being served? For those who may not have time to read the full decision, I have tried to pull out the “nut” of the basis for the holding in the text pasted below. It’s definitely a secondary meaning case and the ruling was that https://urldefense.com/v3/__http://booking.com__;!!DUT_TFPxUQ!TkxB2FPyM1jK-V... is NOT generic but is rather a source-indicating trademark via acquired distinctiveness. The Supreme Court affirmed the 4th Circuit and the lower federal district court findings in this regard. The text describing those findings is pasted below. Anne “Relying in significant part on Booking.com’s new evidence of consumer perception, the District Court concluded that “https://urldefense.com/v3/__http://Booking.com__;!!DUT_TFPxUQ!TkxB2FPyM1jK-V... ”—unlike “booking”—is not generic. The “consuming public,” the court found, “primarily understands that https://urldefense.com/v3/__http://BOOKING.COM__;!!DUT_TFPxUQ!TkxB2FPyM1jK-V... does not refer to a genus, rather it is descriptive of services involving ‘booking’ available at that domain name.” https://urldefense.com/v3/__http://Book-ing.com__;!!DUT_TFPxUQ!TkxB2FPyM1jK-... B.V. v. Matal, 278 F. Supp. 3d 891, 918 (2017). Having determined that “https://urldefense.com/v3/__http://Booking.com__;!!DUT_TFPxUQ!TkxB2FPyM1jK-V... ” is descriptive, the District Court additionally found that the term has acquired secondary meaning as to hotel-reservation services. For those services, the District Court therefore concluded, Booking.com’s marks meet the distinctiveness requirement for registration. The PTO appealed only the District Court’s determination that “https://urldefense.com/v3/__http://Booking.com__;!!DUT_TFPxUQ!TkxB2FPyM1jK-V... ” is not generic. Finding no error in the District Court’s assessment of how consumers perceived the term “https://urldefense.com/v3/__http://Booking.com__;!!DUT_TFPxUQ!TkxB2FPyM1jK-V... ,” the Court of Appeals for the Fourth Circuit affirmed the court of first instance’s judgment. In so ruling, the appeals court rejected the PTO’s contention that the combination of “.com” with a generic term like “booking” “is necessarily generic.” 915 F. 3d 171, 184 (2019).” From: Gnso-newgtld-wg <gnso-newgtld-wg-bounces@icann.org<mailto:gnso-newgtld-wg-bounces@icann.org>> On Behalf Of McGrady, Paul D. Sent: Wednesday, July 8, 2020 6:31 AM To: alexander@schubert.berlin<mailto:alexander@schubert.berlin>; gnso-newgtld-wg@icann.org<mailto:gnso-newgtld-wg@icann.org> Subject: Re: [Gnso-newgtld-wg] Client Alert - Supreme Court Finds https://urldefense.com/v3/__http://BOOKING.COM__;!!DUT_TFPxUQ!TkxB2FPyM1jK-V... Non-Generic And Capable Of Federal Trademark Registration [EXTERNAL] ________________________________ Thanks Alexander. I am not making that argument and so won’t address your variant of an argument I’m not making. The point of the https://urldefense.com/v3/__http://booking.com__;!!DUT_TFPxUQ!TkxB2FPyM1jK-V... decision is that it shreds the arguments that <. + generic term> TLDs will somehow cause a competitive harm. Shreds. Best, Paul From: Gnso-newgtld-wg <gnso-newgtld-wg-bounces@icann.org<mailto:gnso-newgtld-wg-bounces@icann.org>> On Behalf Of Alexander Schubert Sent: Thursday, July 2, 2020 10:48 AM To: gnso-newgtld-wg@icann.org<mailto:gnso-newgtld-wg@icann.org> Subject: Re: [Gnso-newgtld-wg] Client Alert - Supreme Court Finds https://urldefense.com/v3/__http://BOOKING.COM__;!!DUT_TFPxUQ!TkxB2FPyM1jK-V... Non-Generic And Capable Of Federal Trademark Registration Paul, I don’t understand: Are you arguing that because https://urldefense.com/v3/__http://Booking.com__;!!DUT_TFPxUQ!TkxB2FPyM1jK-V... won the right to deny third parties using the letter combination “https://urldefense.com/v3/__http://booking.com__;!!DUT_TFPxUQ!TkxB2FPyM1jK-V... ” in connotation with hotel booking services an applicant for a generic string based gTLD could deny public access to the new gTLD namespace? Question: In your opinion; if the domain registration for https://urldefense.com/v3/__http://booking.com__;!!DUT_TFPxUQ!TkxB2FPyM1jK-V... would expire, could https://urldefense.com/v3/__http://Booking.com__;!!DUT_TFPxUQ!TkxB2FPyM1jK-V... deny the new registrant from offering hotel booking services on a website to which the domain routes – based on their “https://urldefense.com/v3/__http://booking.com__;!!DUT_TFPxUQ!TkxB2FPyM1jK-V... ” TM (once they have it)? Thanks, Alexander From: Gnso-newgtld-wg [mailto:gnso-newgtld-wg-bounces@icann.org] On Behalf Of McGrady, Paul D. Sent: Donnerstag, 2. Juli 2020 18:13 To: Justine Chew <justine.chew@gmail.com<mailto:justine.chew@gmail.com>>; Rubens Kuhl <rubensk@nic.br<mailto:rubensk@nic.br>> Cc: gnso-newgtld-wg@icann.org<mailto:gnso-newgtld-wg@icann.org> Subject: Re: [Gnso-newgtld-wg] Client Alert - Supreme Court Finds https://urldefense.com/v3/__http://BOOKING.COM__;!!DUT_TFPxUQ!TkxB2FPyM1jK-V... Non-Generic And Capable Of Federal Trademark Registration Thanks Justine. Understood. And to be clear, SCOTUS doesn’t address our exact debate (although we are mentioned in the one-man dissent but in that dissent Justice Breyer specifically mentions how new gTLD registries are building brand awareness for their brands, e.g. .club – so again helpful to those who believe <.+generic term> TLDs should remain available as they were in the AGB2012 Guidebook), it just dispatched the fear-of-not-being-able-to-use-the-term argument upon which the <anti-.+ generic term> have built their case and generally takes a big swing at per se rules. Lucky timing, since it gives this WG another chance to actually make Policy as the Board asked us to do rather than just saying “we don’t know.” I understand why those whose position is essentially vitiated by this SCOTUS decision want to push hard to get the topic removed from discussion now that this case it out. Even so, hopefully the Co-chairs will give this the time it was promised. Best, Paul From: Justine Chew <justine.chew@gmail.com<mailto:justine.chew@gmail.com>> Sent: Wednesday, July 1, 2020 11:44 PM To: Rubens Kuhl <rubensk@nic.br<mailto:rubensk@nic.br>>; McGrady, Paul D. <PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>> Cc: gnso-newgtld-wg@icann.org<mailto:gnso-newgtld-wg@icann.org> Subject: Re: [Gnso-newgtld-wg] Client Alert - Supreme Court Finds https://urldefense.com/v3/__http://BOOKING.COM__;!!DUT_TFPxUQ!TkxB2FPyM1jK-V... Non-Generic And Capable Of Federal Trademark Registration Paul, I wasn't suggesting we dismiss what SCOTUS said, but as we well know, there could be room to distinguish court decisions. But I will read the SCOTUS judgment, thanks to you. Rubens, sorry to not be helpful here - I don't know - but it's not inconceivable to me that a (supreme) court of a different jurisdiction may choose to hold a different view. Kind regards, Justine --- On Thu, 2 Jul 2020 at 11:53, Rubens Kuhl <rubensk@nic.br<mailto:rubensk@nic.br>> wrote: Is there a position on generic trademarks in general from WIPO ? Rubens On 2 Jul 2020, at 00:05, Justine Chew <justine.chew@gmail.com<mailto:justine.chew@gmail.com>> wrote: Hi Paul, thanks for the pdf. I can't help but to wonder what might happen if a (supreme) court of another jurisdiction were to hold a different view. Kind regards, Justine --- On Thu, 2 Jul 2020 at 10:49, McGrady, Paul D. <PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>> wrote: Thanks Justine. I’ve attached a PDF for you. I’m not familiar with the contents of the other commentary article you mention, but I think the actual opinion by Ginsburg makes it clear that the per se rule is quite abolished at the USPTO. The Justice writes: “The PTO’s principal concern is that trademark protection for a term like “https://urldefense.com/v3/__http://Booking.com__;!!DUT_TFPxUQ!TkxB2FPyM1jK-V... <https://urldefense.com/v3/__http:/booking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoKbDIN6Nn7s6jAedq1tu8kIGCdfddt5BrgvsLbd3ChyMOVDDD3QvBsFY$>” would hinder competitors. But the PTO does not assert that others seeking to offer online hotel-reservation services need to call their services “https://urldefense.com/v3/__http://Booking.com__;!!DUT_TFPxUQ!TkxB2FPyM1jK-V... <https://urldefense.com/v3/__http:/booking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoKbDIN6Nn7s6jAedq1tu8kIGCdfddt5BrgvsLbd3ChyMOVDDD3QvBsFY$>.” Rather, the PTO fears that trademark protection for “https://urldefense.com/v3/__http://Booking.com__;!!DUT_TFPxUQ!TkxB2FPyM1jK-V... <https://urldefense.com/v3/__http:/booking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoKbDIN6Nn7s6jAedq1tu8kIGCdfddt5BrgvsLbd3ChyMOVDDD3QvBsFY$>” could exclude or inhibit competitors from using the term “booking” or adopting domain names like “https://urldefense.com/v3/__http://ebooking.com__;!!DUT_TFPxUQ!TkxB2FPyM1jK-... <https://urldefense.com/v3/__http:/ebooking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoKbDIN6Nn7s6jAedq1tu8kIGCdfddt5BrgvsLbd3ChyMOVDDDxlo9Go0$>” or “https://urldefense.com/v3/__http://hotel-booking.com__;!!DUT_TFPxUQ!TkxB2FPy... <https://urldefense.com/v3/__http:/hotel-booking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoKbDIN6Nn7s6jAedq1tu8kIGCdfddt5BrgvsLbd3ChyMOVDDDcbI2aE4$>.” Brief for Petitioners 27–28. The PTO’s objection, therefore, is not to exclusive use of “https://urldefense.com/v3/__http://Booking.com__;!!DUT_TFPxUQ!TkxB2FPyM1jK-V... <https://urldefense.com/v3/__http:/booking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoKbDIN6Nn7s6jAedq1tu8kIGCdfddt5BrgvsLbd3ChyMOVDDD3QvBsFY$>” as a mark, but to undue control over similar language, i.e., “booking,” that others should remain free to use. That concern attends any descriptive mark. Responsive to it, trademark law hems in the scope of such marks short of denying trademark protection altogether. Notably, a competitor’s use does not infringe a mark unless it is likely to confuse consumers. See §§1114(1), 1125(a)(1)(A); 4 McCarthy §23:1.50 (collecting state law). In assessing the likelihood of confusion, courts consider the mark’s distinctiveness: “The weaker a mark, the fewer are the junior uses that will trigger a likelihood of consumer confusion.” 2 id., §11:76. When a mark incorporates generic or highly descriptive components, consumers are less likely to think that other uses of the common element emanate from the mark’s owner. Ibid. Similarly, “[i]n a ‘crowded’ field of look-alike marks” (e.g., hotel names including the word “grand”), consumers “may have learned to carefully pick out” one mark from another. Id., §11:85. And even where some consumer confusion exists, the doctrine known as classic fair use, see id., §11:45, protects from liability anyone who uses a descriptive term, “fairly and in good faith” and “otherwise than as a mark,” merely to describe her own goods. 15 U. S. C. §1115(b)(4); see KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U. S. 111, 122–123 (2004). These doctrines guard against the anticompetitive effects the PTO identifies, ensuring that registration of “https://urldefense.com/v3/__http://Booking.com__;!!DUT_TFPxUQ!TkxB2FPyM1jK-V... <https://urldefense.com/v3/__http:/booking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoKbDIN6Nn7s6jAedq1tu8kIGCdfddt5BrgvsLbd3ChyMOVDDD3QvBsFY$>” would not yield its holder a monopoly on the term “booking.” https://urldefense.com/v3/__http://Booking.com__;!!DUT_TFPxUQ!TkxB2FPyM1jK-V... <https://urldefense.com/v3/__http:/booking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoKb...> concedes that “https://urldefense.com/v3/__http://Booking.com__;!!DUT_TFPxUQ!TkxB2FPyM1jK-V... <https://urldefense.com/v3/__http:/booking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoKbDIN6Nn7s6jAedq1tu8kIGCdfddt5BrgvsLbd3ChyMOVDDD3QvBsFY$>” would be a “weak” mark. Tr. of Oral Arg. 66. See also id., at 42–43, 55. The mark is descriptive, https://urldefense.com/v3/__http://Booking.com__;!!DUT_TFPxUQ!TkxB2FPyM1jK-V... <https://urldefense.com/v3/__http:/booking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoKb...> recognizes, making it “harder . . . to show a likelihood of confusion.” Id., at 43. Furthermore, because its mark is one of many “similarly worded marks,” https://urldefense.com/v3/__http://Booking.com__;!!DUT_TFPxUQ!TkxB2FPyM1jK-V... <https://urldefense.com/v3/__http:/booking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoKb...> accepts that close variations are unlikely to infringe. Id., at 66. And https://urldefense.com/v3/__http://Booking.com__;!!DUT_TFPxUQ!TkxB2FPyM1jK-V... <https://urldefense.com/v3/__http:/booking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoKb...> acknowledges that federal registration of “https://urldefense.com/v3/__http://Booking.com__;!!DUT_TFPxUQ!TkxB2FPyM1jK-V... <https://urldefense.com/v3/__http:/booking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoKbDIN6Nn7s6jAedq1tu8kIGCdfddt5BrgvsLbd3ChyMOVDDD3QvBsFY$>” would not prevent competitors from using the word “booking” to describe their own services. Id., at 55.” So, those against <.+ generic term> TLDs are going to have to find some other basis to argue that there will be some sort of harm. This leaves the opponents with (1) being against them because they didn’t apply but their competitors did; (2) they are a registrar that can’t make any money on them; (3) a bias against free speech; (4) a bias against nascent trademarks. None of these are nearly as noble sounding as the fear about competitive harm, but Ginsburg has nicely dispatched that fear. Sure would be nice if the Co-chairs would allow more time, as initially promised, so that we can develop some policy. This decision by SCOTUS is very instructive and we should take the time to understand it and build guardrails around the <.+ generic term> TLDs instead of just throwing our hands up and sending nothing the Board instead of the something they asked us for. Best, Paul From: Justine Chew <justine.chew@gmail.com<mailto:justine.chew@gmail.com>> Sent: Wednesday, July 1, 2020 8:51 PM To: McGrady, Paul D. <PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>> Cc: Aikman-Scalese, Anne <AAikman@lrrc.com<mailto:AAikman@lrrc.com>>; gnso-newgtld-wg@icann.org<mailto:gnso-newgtld-wg@icann.org> Subject: Re: [Gnso-newgtld-wg] Client Alert - Supreme Court Finds https://urldefense.com/v3/__http://BOOKING.COM__;!!DUT_TFPxUQ!TkxB2FPyM1jK-V... <https://urldefense.com/v3/__http:/booking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoKb...> Non-Generic And Capable Of Federal Trademark Registration Hi Paul, The link you offered is one behind a paywall, so not very useful for me as a non-subscriber. But I note that Winterfeldt IP Group has also released a client advisory which points to uncertainty and important element(s) not raised in the appeal and therefore not considered by SCOTUS. Kind regards, Justine --- On Wed, 1 Jul 2020 at 10:51, McGrady, Paul D. <PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>> wrote: Thanks Anne. All, here is the link to the actual decision: https://urldefense.com/v3/__https://www.law360.com/dockets/download/5efb4734... <https://urldefense.com/v3/__https:/www.law360.com/dockets/download/5efb47347...>. 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://urldefense.com/v3/__https:/www.taftlaw.com/general/subscribe__;!!DUT...>. For additional resources, visit Taft's COVID-19 Resource Toolkit<https://urldefense.com/v3/__https:/www.taftlaw.com/general/coronavirus-covid...>. 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<mailto: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<mailto:gnso-newgtld-wg@icann.org> Subject: [Gnso-newgtld-wg] FW: Client Alert - Supreme Court Finds https://urldefense.com/v3/__http://BOOKING.COM__;!!DUT_TFPxUQ!TkxB2FPyM1jK-V... <https://urldefense.com/v3/__http:/booking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoKb...> 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 https://urldefense.com/v3/__http://booking.com__;!!DUT_TFPxUQ!TkxB2FPyM1jK-V... <https://urldefense.com/v3/__http:/booking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoKb...> trademark case that Paul and I were discussing on the list, please see attached summary. 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MarC. If the generic word describes registry services, you may be right. But that is not what you and Paul are talking about. You are talking about source indication in relation to generic words that apply to the goods or services of third parties who register the second level domains. This argument is “apples to oranges”. In other words, .orange may be a distinctive TLD for registrar services (and is fanciful, not generic). (Dot)toplevel might also ultimately be able to acquire some distinctiveness for registry services. However, a Closed Generic registry for .oranges does not function as a “generic” source indicator for registry services providing domain name registrations for many different sellers of oranges. The owner is using the name to render registry services, not to render services as a seller of oranges. To Alexander’s question, the case is being discussed in part because future applicants for Closed Generic TLDs are planning to recite the case in their Request for Reconsideration when/if ICANN denies their Closed Generic application(s) in the next round. Such applicants will also be able to effectively “block” any and all subsequent applications for the same TLD string which are “open” in nature because the WG has expressed a majority view that no new applications for the same string can be made as long as any prior application has not been withdrawn. (See Section 2.2.3 pages 28-33 of the Production Document.) If there are separate applications filed at the same time in the next round for a closed and an open gTLD generic term, get ready for the litigation if ICANN does not place these two strings in a string contention set. The applicant for the Closed Generic will claim the alleged “status quo” is that there is no prohibition on applications for Closed Generics. Anne From: trachtenbergm@gtlaw.com <trachtenbergm@gtlaw.com> Sent: Wednesday, July 8, 2020 2:51 PM To: Aikman-Scalese, Anne <AAikman@lrrc.com>; PMcGrady@taftlaw.com; alexander@schubert.berlin; gnso-newgtld-wg@icann.org Subject: RE: [Gnso-newgtld-wg] Client Alert - Supreme Court Finds BOOKING.COM Non-Generic And Capable Of Federal Trademark Registrat [EXTERNAL] ________________________________ AnnE, A TLD is not inherently a trademark just like a second level domain is not inherently one but there is no reason that it could not acquire distinctiveness and become one. You make my point when you say that the TLD could acquire distinctiveness in relation to operating a registry and authorizing the sale of domain names. However I don’t understand why you preference the point by saying “only” as if operating a registry and authorizing the sale of domain names is somehow less worthy of trademark protection than other goods or services. Marc H. Trachtenberg Shareholder Greenberg Traurig, LLP | 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 Tel 312.456.1020 Mobile 773.677.3305 trac@gtlaw.com<mailto:trac@gtlaw.com> | www.gtlaw.com<http://www.gtlaw.com/> [Greenberg Traurig] From: Aikman-Scalese, Anne [mailto:AAikman@lrrc.com] Sent: Wednesday, July 8, 2020 4:19 PM To: Trachtenberg, Marc H. (Shld-Chi-IP-Tech) <trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>>; PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>; alexander@schubert.berlin<mailto:alexander@schubert.berlin>; gnso-newgtld-wg@icann.org<mailto:gnso-newgtld-wg@icann.org> Subject: RE: [Gnso-newgtld-wg] Client Alert - Supreme Court Finds BOOKING.COM Non-Generic And Capable Of Federal Trademark Registrat Thanks Marc. By the way, my name is spelled “Anne”. You are equating a domain name registration held to have acquired secondary meaning with a proposed TLD in business to sell domain names. The question in the case was not whether there was any anti-competitive effect. It was whether it was a source indicator. A TLD is not a trademark and it’s tough to see why you think “acquired distinctiveness” applies to a proposed Closed Generic TLD. This is especially true since the only acquired distinctiveness would have to be in relation to operating a registry and authorizing the sale of domain names, not acquired distinctiveness in relation to the common meaning of the generic term. AnnE From: trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com> <trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>> Sent: Wednesday, July 8, 2020 1:15 PM To: Aikman-Scalese, Anne <AAikman@lrrc.com<mailto:AAikman@lrrc.com>>; PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>; alexander@schubert.berlin<mailto:alexander@schubert.berlin>; gnso-newgtld-wg@icann.org<mailto:gnso-newgtld-wg@icann.org> Subject: RE: [Gnso-newgtld-wg] Client Alert - Supreme Court Finds BOOKING.COM Non-Generic And Capable Of Federal Trademark Registration [EXTERNAL] ________________________________ Ann, You are responding to arguments that I didn’t make including that the owner of booking.com has a Legal Rights Objection against the possible delegation of .booking. The point is that this case supports that there is no anti-competitive effect or harm from one company owning a domain name consisting of a term that is generic in another context, which I think extends to ownership of a TLD consisting of a term that is generic in another context, and we have yet to see any evidence to the contrary that there is such harm other than the opinions of certain working group members. Marc H. Trachtenberg Shareholder Greenberg Traurig, LLP | 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 Tel 312.456.1020 Mobile 773.677.3305 trac@gtlaw.com<mailto:trac@gtlaw.com> | www.gtlaw.com<http://www.gtlaw.com/> [Greenberg Traurig] From: Aikman-Scalese, Anne [mailto:AAikman@lrrc.com] Sent: Wednesday, July 8, 2020 2:49 PM To: Trachtenberg, Marc H. (Shld-Chi-IP-Tech) <trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>>; PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>; alexander@schubert.berlin<mailto:alexander@schubert.berlin>; gnso-newgtld-wg@icann.org<mailto:gnso-newgtld-wg@icann.org> Subject: RE: [Gnso-newgtld-wg] Client Alert - Supreme Court Finds BOOKING.COM Non-Generic And Capable Of Federal Trademark Registration Marc, If the argument is based on the booking.com case, then a .generic closed TLD has to acquire secondary meaning before it can be afforded a trademark registration. And it has to acquire secondary meaning for the particular services it renders, which is odd in and of itself since the services it renders are the operation of the domain itself and NOT necessarily the services indicated by the generic term so go figure as to the real relationship between secondary meaning trademark law and TLDs. Don’t everybody run to the USPTO at the same time to try to register “.runway” for registry services for a closed TLD, whether you mean for airplane runways or modeling runways. There are lots of applications and registrations for that word already. And the owner of the Closed Generic for .runway is not necessarily known for either one, but could become known for running a TLD where third parties want to buy the second level domain. So the registry isn’t acquiring secondary meaning in the .runway TLD for runway services. Rather it may be able to show that it is adopting a fanciful name for TLD registry services. This is one of the reasons I say the booking.com case is about US acquired secondary meaning trademark law, not about ICANN policy on Closed Generic registries. Don’t think for a minute that the SCOTUS decision means that the owner of booking.com has a Legal Rights Objection against the possible delegation of .booking. Anne From: trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com> <trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>> Sent: Wednesday, July 8, 2020 11:38 AM To: Aikman-Scalese, Anne <AAikman@lrrc.com<mailto:AAikman@lrrc.com>>; PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>; alexander@schubert.berlin<mailto:alexander@schubert.berlin>; gnso-newgtld-wg@icann.org<mailto:gnso-newgtld-wg@icann.org> Subject: RE: [Gnso-newgtld-wg] Client Alert - Supreme Court Finds BOOKING.COM Non-Generic And Capable Of Federal Trademark Registration [EXTERNAL] ________________________________ Ann, While it is true that the registry (technically through registrars) would be selling multiple second level domain name registrations to thousands of different business sources of goods and services, the critical aspect is that every one of those second level domains would emanate from a single source – the registry. There is no other place to get a second level in the “generic” TLD except from the registry. And the registry can have quality control on each of the domains in the form of registration and/or use requirements. A trademark is a source indicator and in this context, the fact that second level sits atop the “generic” TLD indicates that it emanates from a single source the registry. And it doesn’t matter if the consuming public knows who the registry operator is. Trademark law is clear that the trademark must simply communicate that the good or service emanates from a single source, not identify the specific source. Accordingly, in that sense the “generic” TLD is not generic at all and is like booking.com. The businesses using the second level might be using the second level in connection with their business but that does not take away from the potential source indicating function of the TLD in the same way that if Burger King uses Sony TVs to display its branded BK menu it does not take away from the source indicating function of the SONY mark on the TV. Best regards, Marc H. Trachtenberg Shareholder Greenberg Traurig, LLP | 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 Tel 312.456.1020 Mobile 773.677.3305 trac@gtlaw.com<mailto:trac@gtlaw.com> | www.gtlaw.com<http://www.gtlaw.com/> [Greenberg Traurig] From: Gnso-newgtld-wg [mailto:gnso-newgtld-wg-bounces@icann.org] On Behalf Of Aikman-Scalese, Anne Sent: Wednesday, July 8, 2020 11:59 AM To: McGrady, Paul D. <PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>>; alexander@schubert.berlin<mailto:alexander@schubert.berlin>; gnso-newgtld-wg@icann.org<mailto:gnso-newgtld-wg@icann.org> Subject: Re: [Gnso-newgtld-wg] Client Alert - Supreme Court Finds BOOKING.COM Non-Generic And Capable Of Federal Trademark Registration *EXTERNAL TO GT* Paul, Your reference to the booking.com ruling as something that “shreds the notion that generic terms somehow cause competitive harm” is surprising to me. The US Supreme Court Ruling concluded, based on evidence below, that booking.com was NOT generic. It’s a secondary meaning case in which the evidence below clearly demonstrated that the consuming public associates the booking.com site with a SINGLE SOURCE indicator of certain services and related reputation in the marketplace. In so holding, the court rejected the USPTO practice of always denying registration to a generic term in combination with .com. Putting aside the question of having US law on secondary meaning govern ICANN policy, I don’t quite understand why you maintain that a generic TLD with multiple second level domain registrations could somehow become a “single source” indicator of quality and service. In other words, booking.com is a particular source of booking services that provides certain guarantees, payment policies, reputation for quality etc. on which consumers rely. Since you make references to a “pre-trademark”, you seem to be saying that a closed generic TLD could eventually operate as a trademark for a “single source” indicator after acquiring secondary meaning in the marketplace, even though the registry would be selling multiple second level domain name registrations to thousands of different business sources of goods and services. Could you please elaborate on your reasoning? Is this about full quality control by the Registry of goods and services being offered under a particular Closed Generic TLD and is that the basis of your argument for the Public Interest being served? For those who may not have time to read the full decision, I have tried to pull out the “nut” of the basis for the holding in the text pasted below. It’s definitely a secondary meaning case and the ruling was that booking.com is NOT generic but is rather a source-indicating trademark via acquired distinctiveness. The Supreme Court affirmed the 4th Circuit and the lower federal district court findings in this regard. The text describing those findings is pasted below. Anne “Relying in significant part on Booking.com’s new evidence of consumer perception, the District Court concluded that “Booking.com”—unlike “booking”—is not generic. The “consuming public,” the court found, “primarily understands that BOOKING.COM does not refer to a genus, rather it is descriptive of services involving ‘booking’ available at that domain name.” Book-ing.com B.V. v. Matal, 278 F. Supp. 3d 891, 918 (2017). Having determined that “Booking.com” is descriptive, the District Court additionally found that the term has acquired secondary meaning as to hotel-reservation services. For those services, the District Court therefore concluded, Booking.com’s marks meet the distinctiveness requirement for registration. The PTO appealed only the District Court’s determination that “Booking.com” is not generic. Finding no error in the District Court’s assessment of how consumers perceived the term “Booking.com,” the Court of Appeals for the Fourth Circuit affirmed the court of first instance’s judgment. In so ruling, the appeals court rejected the PTO’s contention that the combination of “.com” with a generic term like “booking” “is necessarily generic.” 915 F. 3d 171, 184 (2019).” From: Gnso-newgtld-wg <gnso-newgtld-wg-bounces@icann.org<mailto:gnso-newgtld-wg-bounces@icann.org>> On Behalf Of McGrady, Paul D. Sent: Wednesday, July 8, 2020 6:31 AM To: alexander@schubert.berlin<mailto:alexander@schubert.berlin>; gnso-newgtld-wg@icann.org<mailto:gnso-newgtld-wg@icann.org> Subject: Re: [Gnso-newgtld-wg] Client Alert - Supreme Court Finds BOOKING.COM Non-Generic And Capable Of Federal Trademark Registration [EXTERNAL] ________________________________ Thanks Alexander. I am not making that argument and so won’t address your variant of an argument I’m not making. The point of the booking.com decision is that it shreds the arguments that <. + generic term> TLDs will somehow cause a competitive harm. Shreds. Best, Paul From: Gnso-newgtld-wg <gnso-newgtld-wg-bounces@icann.org<mailto:gnso-newgtld-wg-bounces@icann.org>> On Behalf Of Alexander Schubert Sent: Thursday, July 2, 2020 10:48 AM To: gnso-newgtld-wg@icann.org<mailto:gnso-newgtld-wg@icann.org> Subject: Re: [Gnso-newgtld-wg] Client Alert - Supreme Court Finds BOOKING.COM Non-Generic And Capable Of Federal Trademark Registration Paul, I don’t understand: Are you arguing that because Booking.com won the right to deny third parties using the letter combination “booking.com” in connotation with hotel booking services an applicant for a generic string based gTLD could deny public access to the new gTLD namespace? Question: In your opinion; if the domain registration for booking.com would expire, could Booking.com deny the new registrant from offering hotel booking services on a website to which the domain routes – based on their “booking.com” TM (once they have it)? Thanks, Alexander From: Gnso-newgtld-wg [mailto:gnso-newgtld-wg-bounces@icann.org] On Behalf Of McGrady, Paul D. Sent: Donnerstag, 2. Juli 2020 18:13 To: Justine Chew <justine.chew@gmail.com<mailto:justine.chew@gmail.com>>; Rubens Kuhl <rubensk@nic.br<mailto:rubensk@nic.br>> Cc: gnso-newgtld-wg@icann.org<mailto:gnso-newgtld-wg@icann.org> Subject: Re: [Gnso-newgtld-wg] Client Alert - Supreme Court Finds BOOKING.COM Non-Generic And Capable Of Federal Trademark Registration Thanks Justine. Understood. And to be clear, SCOTUS doesn’t address our exact debate (although we are mentioned in the one-man dissent but in that dissent Justice Breyer specifically mentions how new gTLD registries are building brand awareness for their brands, e.g. .club – so again helpful to those who believe <.+generic term> TLDs should remain available as they were in the AGB2012 Guidebook), it just dispatched the fear-of-not-being-able-to-use-the-term argument upon which the <anti-.+ generic term> have built their case and generally takes a big swing at per se rules. Lucky timing, since it gives this WG another chance to actually make Policy as the Board asked us to do rather than just saying “we don’t know.” I understand why those whose position is essentially vitiated by this SCOTUS decision want to push hard to get the topic removed from discussion now that this case it out. Even so, hopefully the Co-chairs will give this the time it was promised. Best, Paul From: Justine Chew <justine.chew@gmail.com<mailto:justine.chew@gmail.com>> Sent: Wednesday, July 1, 2020 11:44 PM To: Rubens Kuhl <rubensk@nic.br<mailto:rubensk@nic.br>>; McGrady, Paul D. <PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>> Cc: gnso-newgtld-wg@icann.org<mailto:gnso-newgtld-wg@icann.org> Subject: Re: [Gnso-newgtld-wg] Client Alert - Supreme Court Finds BOOKING.COM Non-Generic And Capable Of Federal Trademark Registration Paul, I wasn't suggesting we dismiss what SCOTUS said, but as we well know, there could be room to distinguish court decisions. But I will read the SCOTUS judgment, thanks to you. Rubens, sorry to not be helpful here - I don't know - but it's not inconceivable to me that a (supreme) court of a different jurisdiction may choose to hold a different view. Kind regards, Justine --- On Thu, 2 Jul 2020 at 11:53, Rubens Kuhl <rubensk@nic.br<mailto:rubensk@nic.br>> wrote: Is there a position on generic trademarks in general from WIPO ? Rubens On 2 Jul 2020, at 00:05, Justine Chew <justine.chew@gmail.com<mailto:justine.chew@gmail.com>> wrote: Hi Paul, thanks for the pdf. I can't help but to wonder what might happen if a (supreme) court of another jurisdiction were to hold a different view. Kind regards, Justine --- On Thu, 2 Jul 2020 at 10:49, McGrady, Paul D. <PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>> wrote: Thanks Justine. I’ve attached a PDF for you. I’m not familiar with the contents of the other commentary article you mention, but I think the actual opinion by Ginsburg makes it clear that the per se rule is quite abolished at the USPTO. The Justice writes: “The PTO’s principal concern is that trademark protection for a term like “Booking.com<https://urldefense.com/v3/__http:/booking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoKbDIN6Nn7s6jAedq1tu8kIGCdfddt5BrgvsLbd3ChyMOVDDD3QvBsFY$>” would hinder competitors. But the PTO does not assert that others seeking to offer online hotel-reservation services need to call their services “Booking.com<https://urldefense.com/v3/__http:/booking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoKbDIN6Nn7s6jAedq1tu8kIGCdfddt5BrgvsLbd3ChyMOVDDD3QvBsFY$>.” Rather, the PTO fears that trademark protection for “Booking.com<https://urldefense.com/v3/__http:/booking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoKbDIN6Nn7s6jAedq1tu8kIGCdfddt5BrgvsLbd3ChyMOVDDD3QvBsFY$>” could exclude or inhibit competitors from using the term “booking” or adopting domain names like “ebooking.com<https://urldefense.com/v3/__http:/ebooking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoKbDIN6Nn7s6jAedq1tu8kIGCdfddt5BrgvsLbd3ChyMOVDDDxlo9Go0$>” or “hotel-booking.com<https://urldefense.com/v3/__http:/hotel-booking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoKbDIN6Nn7s6jAedq1tu8kIGCdfddt5BrgvsLbd3ChyMOVDDDcbI2aE4$>.” Brief for Petitioners 27–28. The PTO’s objection, therefore, is not to exclusive use of “Booking.com<https://urldefense.com/v3/__http:/booking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoKbDIN6Nn7s6jAedq1tu8kIGCdfddt5BrgvsLbd3ChyMOVDDD3QvBsFY$>” as a mark, but to undue control over similar language, i.e., “booking,” that others should remain free to use. That concern attends any descriptive mark. Responsive to it, trademark law hems in the scope of such marks short of denying trademark protection altogether. Notably, a competitor’s use does not infringe a mark unless it is likely to confuse consumers. See §§1114(1), 1125(a)(1)(A); 4 McCarthy §23:1.50 (collecting state law). In assessing the likelihood of confusion, courts consider the mark’s distinctiveness: “The weaker a mark, the fewer are the junior uses that will trigger a likelihood of consumer confusion.” 2 id., §11:76. When a mark incorporates generic or highly descriptive components, consumers are less likely to think that other uses of the common element emanate from the mark’s owner. Ibid. Similarly, “[i]n a ‘crowded’ field of look-alike marks” (e.g., hotel names including the word “grand”), consumers “may have learned to carefully pick out” one mark from another. Id., §11:85. And even where some consumer confusion exists, the doctrine known as classic fair use, see id., §11:45, protects from liability anyone who uses a descriptive term, “fairly and in good faith” and “otherwise than as a mark,” merely to describe her own goods. 15 U. S. C. §1115(b)(4); see KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U. S. 111, 122–123 (2004). These doctrines guard against the anticompetitive effects the PTO identifies, ensuring that registration of “Booking.com<https://urldefense.com/v3/__http:/booking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoKbDIN6Nn7s6jAedq1tu8kIGCdfddt5BrgvsLbd3ChyMOVDDD3QvBsFY$>” would not yield its holder a monopoly on the term “booking.” Booking.com<https://urldefense.com/v3/__http:/booking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoKb...> concedes that “Booking.com<https://urldefense.com/v3/__http:/booking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoKbDIN6Nn7s6jAedq1tu8kIGCdfddt5BrgvsLbd3ChyMOVDDD3QvBsFY$>” would be a “weak” mark. Tr. of Oral Arg. 66. See also id., at 42–43, 55. The mark is descriptive, Booking.com<https://urldefense.com/v3/__http:/booking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoKb...> recognizes, making it “harder . . . to show a likelihood of confusion.” Id., at 43. Furthermore, because its mark is one of many “similarly worded marks,” Booking.com<https://urldefense.com/v3/__http:/booking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoKb...> accepts that close variations are unlikely to infringe. Id., at 66. And Booking.com<https://urldefense.com/v3/__http:/booking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoKb...> acknowledges that federal registration of “Booking.com<https://urldefense.com/v3/__http:/booking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoKbDIN6Nn7s6jAedq1tu8kIGCdfddt5BrgvsLbd3ChyMOVDDD3QvBsFY$>” would not prevent competitors from using the word “booking” to describe their own services. Id., at 55.” So, those against <.+ generic term> TLDs are going to have to find some other basis to argue that there will be some sort of harm. This leaves the opponents with (1) being against them because they didn’t apply but their competitors did; (2) they are a registrar that can’t make any money on them; (3) a bias against free speech; (4) a bias against nascent trademarks. None of these are nearly as noble sounding as the fear about competitive harm, but Ginsburg has nicely dispatched that fear. Sure would be nice if the Co-chairs would allow more time, as initially promised, so that we can develop some policy. This decision by SCOTUS is very instructive and we should take the time to understand it and build guardrails around the <.+ generic term> TLDs instead of just throwing our hands up and sending nothing the Board instead of the something they asked us for. Best, Paul From: Justine Chew <justine.chew@gmail.com<mailto:justine.chew@gmail.com>> Sent: Wednesday, July 1, 2020 8:51 PM To: McGrady, Paul D. <PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>> Cc: Aikman-Scalese, Anne <AAikman@lrrc.com<mailto:AAikman@lrrc.com>>; gnso-newgtld-wg@icann.org<mailto:gnso-newgtld-wg@icann.org> Subject: Re: [Gnso-newgtld-wg] Client Alert - Supreme Court Finds BOOKING.COM<https://urldefense.com/v3/__http:/booking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoKb...> Non-Generic And Capable Of Federal Trademark Registration Hi Paul, The link you offered is one behind a paywall, so not very useful for me as a non-subscriber. But I note that Winterfeldt IP Group has also released a client advisory which points to uncertainty and important element(s) not raised in the appeal and therefore not considered by SCOTUS. Kind regards, Justine --- On Wed, 1 Jul 2020 at 10:51, McGrady, Paul D. <PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>> wrote: Thanks Anne. All, here is the link to the actual decision: https://www.law360.com/dockets/download/5efb47347da17405e86713cb?doc_url=https%3A%2F%2Fwww.supremecourt.gov%2Fopinions%2F19pdf%2F19-46_8n59.pdf&label=Opinion<https://urldefense.com/v3/__https:/www.law360.com/dockets/download/5efb47347da17405e86713cb?doc_url=https*3A*2F*2Fwww.supremecourt.gov*2Fopinions*2F19pdf*2F19-46_8n59.pdf&label=Opinion__;JSUlJSUl!!DUT_TFPxUQ!Wzo-NoIXhLvoKbDIN6Nn7s6jAedq1tu8kIGCdfddt5BrgvsLbd3ChyMOVDDDt-3VfdQ$>. 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://urldefense.com/v3/__https:/www.taftlaw.com/general/subscribe__;!!DUT...>. For additional resources, visit Taft's COVID-19 Resource Toolkit<https://urldefense.com/v3/__https:/www.taftlaw.com/general/coronavirus-covid...>. 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<mailto: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<mailto:gnso-newgtld-wg@icann.org> Subject: [Gnso-newgtld-wg] FW: Client Alert - Supreme Court Finds BOOKING.COM<https://urldefense.com/v3/__http:/booking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoKb...> 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<https://urldefense.com/v3/__http:/booking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoKb...> 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> _____________________________ <image001.png> Lewis Roca Rothgerber Christie LLP One South Church Avenue, Suite 2000 Tucson, Arizona 85701-1611 lrrc.com<https://urldefense.com/v3/__http:/lrrc.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoKbDIN...> ________________________________ 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. 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Anne, I simply don’t understand your point and you are responding to arguments I didn’t make,. “If the generic word describes registry services, you may be right. But that is not what you and Paul are talking about. You are talking about source indication in relation to generic words that apply to the goods or services of third parties who register the second level domains. This argument is “apples to oranges”. What do you mean here? If the generic word described registry services then it would not be protectable. I am not talking about “source indication in relation to generic words that apply to the goods or services of third parties who register the second level domains” and don’t even know what that means. I am saying that a TLD like .cars could acquire distinctiveness for issuance of second level domains regardless of what use the third party that registered the domain uses the domain for because all second level domains in .cars emanate from the same source. But I agree with others that this is getting off point so no need to respond on it as we can agree to disagree. The real undeniable point is that there is no evidence beyond some WG members opinions and speculations that having closed generics will cause harm to the DNS, competition (which is not supposed to be in the remit of ICANN), or anything else for that matter so there is no reason to prohibit them. Marc H. Trachtenberg Shareholder Greenberg Traurig, LLP | 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 Tel 312.456.1020 Mobile 773.677.3305 trac@gtlaw.com<mailto:trac@gtlaw.com> | http://www.gtlaw.com<http://www.gtlaw.com/> [Greenberg Traurig] From: Aikman-Scalese, Anne [mailto:AAikman@lrrc.com] Sent: Wednesday, July 8, 2020 5:20 PM To: Trachtenberg, Marc H. (Shld-Chi-IP-Tech) <trachtenbergm@gtlaw.com>; PMcGrady@taftlaw.com; alexander@schubert.berlin; gnso-newgtld-wg@icann.org Subject: RE: [Gnso-newgtld-wg] Client Alert - Supreme Court Finds https://urldefense.com/v3/__http://BOOKING.COM__;!!DUT_TFPxUQ!So1HMo0QDdk_GL... Non-Generic And Capable Of Federal Trademark Registrat MarC. If the generic word describes registry services, you may be right. But that is not what you and Paul are talking about. You are talking about source indication in relation to generic words that apply to the goods or services of third parties who register the second level domains. This argument is “apples to oranges”. In other words, .orange may be a distinctive TLD for registrar services (and is fanciful, not generic). (Dot)toplevel might also ultimately be able to acquire some distinctiveness for registry services. However, a Closed Generic registry for .oranges does not function as a “generic” source indicator for registry services providing domain name registrations for many different sellers of oranges. The owner is using the name to render registry services, not to render services as a seller of oranges. To Alexander’s question, the case is being discussed in part because future applicants for Closed Generic TLDs are planning to recite the case in their Request for Reconsideration when/if ICANN denies their Closed Generic application(s) in the next round. Such applicants will also be able to effectively “block” any and all subsequent applications for the same TLD string which are “open” in nature because the WG has expressed a majority view that no new applications for the same string can be made as long as any prior application has not been withdrawn. (See Section 2.2.3 pages 28-33 of the Production Document.) If there are separate applications filed at the same time in the next round for a closed and an open gTLD generic term, get ready for the litigation if ICANN does not place these two strings in a string contention set. The applicant for the Closed Generic will claim the alleged “status quo” is that there is no prohibition on applications for Closed Generics. Anne From: trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com> <trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>> Sent: Wednesday, July 8, 2020 2:51 PM To: Aikman-Scalese, Anne <AAikman@lrrc.com<mailto:AAikman@lrrc.com>>; PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>; alexander@schubert.berlin<mailto:alexander@schubert.berlin>; gnso-newgtld-wg@icann.org<mailto:gnso-newgtld-wg@icann.org> Subject: RE: [Gnso-newgtld-wg] Client Alert - Supreme Court Finds https://urldefense.com/v3/__http://BOOKING.COM__;!!DUT_TFPxUQ!So1HMo0QDdk_GL... Non-Generic And Capable Of Federal Trademark Registrat [EXTERNAL] ________________________________ AnnE, A TLD is not inherently a trademark just like a second level domain is not inherently one but there is no reason that it could not acquire distinctiveness and become one. You make my point when you say that the TLD could acquire distinctiveness in relation to operating a registry and authorizing the sale of domain names. However I don’t understand why you preference the point by saying “only” as if operating a registry and authorizing the sale of domain names is somehow less worthy of trademark protection than other goods or services. Marc H. Trachtenberg Shareholder Greenberg Traurig, LLP | 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 Tel 312.456.1020 Mobile 773.677.3305 trac@gtlaw.com<mailto:trac@gtlaw.com> | http://www.gtlaw.com<http://www.gtlaw.com/> [Greenberg Traurig] From: Aikman-Scalese, Anne [mailto:AAikman@lrrc.com] Sent: Wednesday, July 8, 2020 4:19 PM To: Trachtenberg, Marc H. (Shld-Chi-IP-Tech) <trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>>; PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>; alexander@schubert.berlin<mailto:alexander@schubert.berlin>; gnso-newgtld-wg@icann.org<mailto:gnso-newgtld-wg@icann.org> Subject: RE: [Gnso-newgtld-wg] Client Alert - Supreme Court Finds https://urldefense.com/v3/__http://BOOKING.COM__;!!DUT_TFPxUQ!So1HMo0QDdk_GL... Non-Generic And Capable Of Federal Trademark Registrat Thanks Marc. By the way, my name is spelled “Anne”. You are equating a domain name registration held to have acquired secondary meaning with a proposed TLD in business to sell domain names. The question in the case was not whether there was any anti-competitive effect. It was whether it was a source indicator. A TLD is not a trademark and it’s tough to see why you think “acquired distinctiveness” applies to a proposed Closed Generic TLD. This is especially true since the only acquired distinctiveness would have to be in relation to operating a registry and authorizing the sale of domain names, not acquired distinctiveness in relation to the common meaning of the generic term. AnnE From: trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com> <trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>> Sent: Wednesday, July 8, 2020 1:15 PM To: Aikman-Scalese, Anne <AAikman@lrrc.com<mailto:AAikman@lrrc.com>>; PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>; alexander@schubert.berlin<mailto:alexander@schubert.berlin>; gnso-newgtld-wg@icann.org<mailto:gnso-newgtld-wg@icann.org> Subject: RE: [Gnso-newgtld-wg] Client Alert - Supreme Court Finds https://urldefense.com/v3/__http://BOOKING.COM__;!!DUT_TFPxUQ!So1HMo0QDdk_GL... Non-Generic And Capable Of Federal Trademark Registration [EXTERNAL] ________________________________ Ann, You are responding to arguments that I didn’t make including that the owner of https://urldefense.com/v3/__http://booking.com__;!!DUT_TFPxUQ!So1HMo0QDdk_GL... has a Legal Rights Objection against the possible delegation of .booking. The point is that this case supports that there is no anti-competitive effect or harm from one company owning a domain name consisting of a term that is generic in another context, which I think extends to ownership of a TLD consisting of a term that is generic in another context, and we have yet to see any evidence to the contrary that there is such harm other than the opinions of certain working group members. Marc H. Trachtenberg Shareholder Greenberg Traurig, LLP | 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 Tel 312.456.1020 Mobile 773.677.3305 trac@gtlaw.com<mailto:trac@gtlaw.com> | http://www.gtlaw.com<http://www.gtlaw.com/> [Greenberg Traurig] From: Aikman-Scalese, Anne [mailto:AAikman@lrrc.com] Sent: Wednesday, July 8, 2020 2:49 PM To: Trachtenberg, Marc H. (Shld-Chi-IP-Tech) <trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>>; PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>; alexander@schubert.berlin<mailto:alexander@schubert.berlin>; gnso-newgtld-wg@icann.org<mailto:gnso-newgtld-wg@icann.org> Subject: RE: [Gnso-newgtld-wg] Client Alert - Supreme Court Finds https://urldefense.com/v3/__http://BOOKING.COM__;!!DUT_TFPxUQ!So1HMo0QDdk_GL... Non-Generic And Capable Of Federal Trademark Registration Marc, If the argument is based on the https://urldefense.com/v3/__http://booking.com__;!!DUT_TFPxUQ!So1HMo0QDdk_GL... case, then a .generic closed TLD has to acquire secondary meaning before it can be afforded a trademark registration. And it has to acquire secondary meaning for the particular services it renders, which is odd in and of itself since the services it renders are the operation of the domain itself and NOT necessarily the services indicated by the generic term so go figure as to the real relationship between secondary meaning trademark law and TLDs. Don’t everybody run to the USPTO at the same time to try to register “.runway” for registry services for a closed TLD, whether you mean for airplane runways or modeling runways. There are lots of applications and registrations for that word already. And the owner of the Closed Generic for .runway is not necessarily known for either one, but could become known for running a TLD where third parties want to buy the second level domain. So the registry isn’t acquiring secondary meaning in the .runway TLD for runway services. Rather it may be able to show that it is adopting a fanciful name for TLD registry services. This is one of the reasons I say the https://urldefense.com/v3/__http://booking.com__;!!DUT_TFPxUQ!So1HMo0QDdk_GL... case is about US acquired secondary meaning trademark law, not about ICANN policy on Closed Generic registries. Don’t think for a minute that the SCOTUS decision means that the owner of https://urldefense.com/v3/__http://booking.com__;!!DUT_TFPxUQ!So1HMo0QDdk_GL... has a Legal Rights Objection against the possible delegation of .booking. Anne From: trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com> <trachtenbergm@gtlaw.com<mailto:trachtenbergm@gtlaw.com>> Sent: Wednesday, July 8, 2020 11:38 AM To: Aikman-Scalese, Anne <AAikman@lrrc.com<mailto:AAikman@lrrc.com>>; PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>; alexander@schubert.berlin<mailto:alexander@schubert.berlin>; gnso-newgtld-wg@icann.org<mailto:gnso-newgtld-wg@icann.org> Subject: RE: [Gnso-newgtld-wg] Client Alert - Supreme Court Finds https://urldefense.com/v3/__http://BOOKING.COM__;!!DUT_TFPxUQ!So1HMo0QDdk_GL... Non-Generic And Capable Of Federal Trademark Registration [EXTERNAL] ________________________________ Ann, While it is true that the registry (technically through registrars) would be selling multiple second level domain name registrations to thousands of different business sources of goods and services, the critical aspect is that every one of those second level domains would emanate from a single source – the registry. There is no other place to get a second level in the “generic” TLD except from the registry. And the registry can have quality control on each of the domains in the form of registration and/or use requirements. A trademark is a source indicator and in this context, the fact that second level sits atop the “generic” TLD indicates that it emanates from a single source the registry. And it doesn’t matter if the consuming public knows who the registry operator is. Trademark law is clear that the trademark must simply communicate that the good or service emanates from a single source, not identify the specific source. Accordingly, in that sense the “generic” TLD is not generic at all and is like https://urldefense.com/v3/__http://booking.com__;!!DUT_TFPxUQ!So1HMo0QDdk_GL... . The businesses using the second level might be using the second level in connection with their business but that does not take away from the potential source indicating function of the TLD in the same way that if Burger King uses Sony TVs to display its branded BK menu it does not take away from the source indicating function of the SONY mark on the TV. Best regards, Marc H. Trachtenberg Shareholder Greenberg Traurig, LLP | 77 West Wacker Drive | Suite 3100 | Chicago, IL 60601 Tel 312.456.1020 Mobile 773.677.3305 trac@gtlaw.com<mailto:trac@gtlaw.com> | http://www.gtlaw.com<http://www.gtlaw.com/> [Greenberg Traurig] From: Gnso-newgtld-wg [mailto:gnso-newgtld-wg-bounces@icann.org] On Behalf Of Aikman-Scalese, Anne Sent: Wednesday, July 8, 2020 11:59 AM To: McGrady, Paul D. <PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>>; alexander@schubert.berlin<mailto:alexander@schubert.berlin>; gnso-newgtld-wg@icann.org<mailto:gnso-newgtld-wg@icann.org> Subject: Re: [Gnso-newgtld-wg] Client Alert - Supreme Court Finds https://urldefense.com/v3/__http://BOOKING.COM__;!!DUT_TFPxUQ!So1HMo0QDdk_GL... Non-Generic And Capable Of Federal Trademark Registration *EXTERNAL TO GT* Paul, Your reference to the https://urldefense.com/v3/__http://booking.com__;!!DUT_TFPxUQ!So1HMo0QDdk_GL... ruling as something that “shreds the notion that generic terms somehow cause competitive harm” is surprising to me. The US Supreme Court Ruling concluded, based on evidence below, that https://urldefense.com/v3/__http://booking.com__;!!DUT_TFPxUQ!So1HMo0QDdk_GL... was NOT generic. It’s a secondary meaning case in which the evidence below clearly demonstrated that the consuming public associates the https://urldefense.com/v3/__http://booking.com__;!!DUT_TFPxUQ!So1HMo0QDdk_GL... site with a SINGLE SOURCE indicator of certain services and related reputation in the marketplace. In so holding, the court rejected the USPTO practice of always denying registration to a generic term in combination with .com. Putting aside the question of having US law on secondary meaning govern ICANN policy, I don’t quite understand why you maintain that a generic TLD with multiple second level domain registrations could somehow become a “single source” indicator of quality and service. In other words, https://urldefense.com/v3/__http://booking.com__;!!DUT_TFPxUQ!So1HMo0QDdk_GL... is a particular source of booking services that provides certain guarantees, payment policies, reputation for quality etc. on which consumers rely. Since you make references to a “pre-trademark”, you seem to be saying that a closed generic TLD could eventually operate as a trademark for a “single source” indicator after acquiring secondary meaning in the marketplace, even though the registry would be selling multiple second level domain name registrations to thousands of different business sources of goods and services. Could you please elaborate on your reasoning? Is this about full quality control by the Registry of goods and services being offered under a particular Closed Generic TLD and is that the basis of your argument for the Public Interest being served? For those who may not have time to read the full decision, I have tried to pull out the “nut” of the basis for the holding in the text pasted below. It’s definitely a secondary meaning case and the ruling was that https://urldefense.com/v3/__http://booking.com__;!!DUT_TFPxUQ!So1HMo0QDdk_GL... is NOT generic but is rather a source-indicating trademark via acquired distinctiveness. The Supreme Court affirmed the 4th Circuit and the lower federal district court findings in this regard. The text describing those findings is pasted below. Anne “Relying in significant part on Booking.com’s new evidence of consumer perception, the District Court concluded that “https://urldefense.com/v3/__http://Booking.com__;!!DUT_TFPxUQ!So1HMo0QDdk_GL... ”—unlike “booking”—is not generic. The “consuming public,” the court found, “primarily understands that https://urldefense.com/v3/__http://BOOKING.COM__;!!DUT_TFPxUQ!So1HMo0QDdk_GL... does not refer to a genus, rather it is descriptive of services involving ‘booking’ available at that domain name.” https://urldefense.com/v3/__http://Book-ing.com__;!!DUT_TFPxUQ!So1HMo0QDdk_G... B.V. v. Matal, 278 F. Supp. 3d 891, 918 (2017). Having determined that “https://urldefense.com/v3/__http://Booking.com__;!!DUT_TFPxUQ!So1HMo0QDdk_GL... ” is descriptive, the District Court additionally found that the term has acquired secondary meaning as to hotel-reservation services. For those services, the District Court therefore concluded, Booking.com’s marks meet the distinctiveness requirement for registration. The PTO appealed only the District Court’s determination that “https://urldefense.com/v3/__http://Booking.com__;!!DUT_TFPxUQ!So1HMo0QDdk_GL... ” is not generic. Finding no error in the District Court’s assessment of how consumers perceived the term “https://urldefense.com/v3/__http://Booking.com__;!!DUT_TFPxUQ!So1HMo0QDdk_GL... ,” the Court of Appeals for the Fourth Circuit affirmed the court of first instance’s judgment. In so ruling, the appeals court rejected the PTO’s contention that the combination of “.com” with a generic term like “booking” “is necessarily generic.” 915 F. 3d 171, 184 (2019).” From: Gnso-newgtld-wg <gnso-newgtld-wg-bounces@icann.org<mailto:gnso-newgtld-wg-bounces@icann.org>> On Behalf Of McGrady, Paul D. Sent: Wednesday, July 8, 2020 6:31 AM To: alexander@schubert.berlin<mailto:alexander@schubert.berlin>; gnso-newgtld-wg@icann.org<mailto:gnso-newgtld-wg@icann.org> Subject: Re: [Gnso-newgtld-wg] Client Alert - Supreme Court Finds https://urldefense.com/v3/__http://BOOKING.COM__;!!DUT_TFPxUQ!So1HMo0QDdk_GL... Non-Generic And Capable Of Federal Trademark Registration [EXTERNAL] ________________________________ Thanks Alexander. I am not making that argument and so won’t address your variant of an argument I’m not making. The point of the https://urldefense.com/v3/__http://booking.com__;!!DUT_TFPxUQ!So1HMo0QDdk_GL... decision is that it shreds the arguments that <. + generic term> TLDs will somehow cause a competitive harm. Shreds. Best, Paul From: Gnso-newgtld-wg <gnso-newgtld-wg-bounces@icann.org<mailto:gnso-newgtld-wg-bounces@icann.org>> On Behalf Of Alexander Schubert Sent: Thursday, July 2, 2020 10:48 AM To: gnso-newgtld-wg@icann.org<mailto:gnso-newgtld-wg@icann.org> Subject: Re: [Gnso-newgtld-wg] Client Alert - Supreme Court Finds https://urldefense.com/v3/__http://BOOKING.COM__;!!DUT_TFPxUQ!So1HMo0QDdk_GL... Non-Generic And Capable Of Federal Trademark Registration Paul, I don’t understand: Are you arguing that because https://urldefense.com/v3/__http://Booking.com__;!!DUT_TFPxUQ!So1HMo0QDdk_GL... won the right to deny third parties using the letter combination “https://urldefense.com/v3/__http://booking.com__;!!DUT_TFPxUQ!So1HMo0QDdk_GL... ” in connotation with hotel booking services an applicant for a generic string based gTLD could deny public access to the new gTLD namespace? Question: In your opinion; if the domain registration for https://urldefense.com/v3/__http://booking.com__;!!DUT_TFPxUQ!So1HMo0QDdk_GL... would expire, could https://urldefense.com/v3/__http://Booking.com__;!!DUT_TFPxUQ!So1HMo0QDdk_GL... deny the new registrant from offering hotel booking services on a website to which the domain routes – based on their “https://urldefense.com/v3/__http://booking.com__;!!DUT_TFPxUQ!So1HMo0QDdk_GL... ” TM (once they have it)? Thanks, Alexander From: Gnso-newgtld-wg [mailto:gnso-newgtld-wg-bounces@icann.org] On Behalf Of McGrady, Paul D. Sent: Donnerstag, 2. Juli 2020 18:13 To: Justine Chew <justine.chew@gmail.com<mailto:justine.chew@gmail.com>>; Rubens Kuhl <rubensk@nic.br<mailto:rubensk@nic.br>> Cc: gnso-newgtld-wg@icann.org<mailto:gnso-newgtld-wg@icann.org> Subject: Re: [Gnso-newgtld-wg] Client Alert - Supreme Court Finds https://urldefense.com/v3/__http://BOOKING.COM__;!!DUT_TFPxUQ!So1HMo0QDdk_GL... Non-Generic And Capable Of Federal Trademark Registration Thanks Justine. Understood. And to be clear, SCOTUS doesn’t address our exact debate (although we are mentioned in the one-man dissent but in that dissent Justice Breyer specifically mentions how new gTLD registries are building brand awareness for their brands, e.g. .club – so again helpful to those who believe <.+generic term> TLDs should remain available as they were in the AGB2012 Guidebook), it just dispatched the fear-of-not-being-able-to-use-the-term argument upon which the <anti-.+ generic term> have built their case and generally takes a big swing at per se rules. Lucky timing, since it gives this WG another chance to actually make Policy as the Board asked us to do rather than just saying “we don’t know.” I understand why those whose position is essentially vitiated by this SCOTUS decision want to push hard to get the topic removed from discussion now that this case it out. Even so, hopefully the Co-chairs will give this the time it was promised. Best, Paul From: Justine Chew <justine.chew@gmail.com<mailto:justine.chew@gmail.com>> Sent: Wednesday, July 1, 2020 11:44 PM To: Rubens Kuhl <rubensk@nic.br<mailto:rubensk@nic.br>>; McGrady, Paul D. <PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>> Cc: gnso-newgtld-wg@icann.org<mailto:gnso-newgtld-wg@icann.org> Subject: Re: [Gnso-newgtld-wg] Client Alert - Supreme Court Finds https://urldefense.com/v3/__http://BOOKING.COM__;!!DUT_TFPxUQ!So1HMo0QDdk_GL... Non-Generic And Capable Of Federal Trademark Registration Paul, I wasn't suggesting we dismiss what SCOTUS said, but as we well know, there could be room to distinguish court decisions. But I will read the SCOTUS judgment, thanks to you. Rubens, sorry to not be helpful here - I don't know - but it's not inconceivable to me that a (supreme) court of a different jurisdiction may choose to hold a different view. Kind regards, Justine --- On Thu, 2 Jul 2020 at 11:53, Rubens Kuhl <rubensk@nic.br<mailto:rubensk@nic.br>> wrote: Is there a position on generic trademarks in general from WIPO ? Rubens On 2 Jul 2020, at 00:05, Justine Chew <justine.chew@gmail.com<mailto:justine.chew@gmail.com>> wrote: Hi Paul, thanks for the pdf. I can't help but to wonder what might happen if a (supreme) court of another jurisdiction were to hold a different view. Kind regards, Justine --- On Thu, 2 Jul 2020 at 10:49, McGrady, Paul D. <PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>> wrote: Thanks Justine. I’ve attached a PDF for you. I’m not familiar with the contents of the other commentary article you mention, but I think the actual opinion by Ginsburg makes it clear that the per se rule is quite abolished at the USPTO. The Justice writes: “The PTO’s principal concern is that trademark protection for a term like “https://urldefense.com/v3/__http://Booking.com__;!!DUT_TFPxUQ!So1HMo0QDdk_GL... <https://urldefense.com/v3/__http:/booking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoKbDIN6Nn7s6jAedq1tu8kIGCdfddt5BrgvsLbd3ChyMOVDDD3QvBsFY$>” would hinder competitors. But the PTO does not assert that others seeking to offer online hotel-reservation services need to call their services “https://urldefense.com/v3/__http://Booking.com__;!!DUT_TFPxUQ!So1HMo0QDdk_GL... <https://urldefense.com/v3/__http:/booking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoKbDIN6Nn7s6jAedq1tu8kIGCdfddt5BrgvsLbd3ChyMOVDDD3QvBsFY$>.” Rather, the PTO fears that trademark protection for “https://urldefense.com/v3/__http://Booking.com__;!!DUT_TFPxUQ!So1HMo0QDdk_GL... <https://urldefense.com/v3/__http:/booking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoKbDIN6Nn7s6jAedq1tu8kIGCdfddt5BrgvsLbd3ChyMOVDDD3QvBsFY$>” could exclude or inhibit competitors from using the term “booking” or adopting domain names like “https://urldefense.com/v3/__http://ebooking.com__;!!DUT_TFPxUQ!So1HMo0QDdk_G... <https://urldefense.com/v3/__http:/ebooking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoKbDIN6Nn7s6jAedq1tu8kIGCdfddt5BrgvsLbd3ChyMOVDDDxlo9Go0$>” or “https://urldefense.com/v3/__http://hotel-booking.com__;!!DUT_TFPxUQ!So1HMo0Q... <https://urldefense.com/v3/__http:/hotel-booking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoKbDIN6Nn7s6jAedq1tu8kIGCdfddt5BrgvsLbd3ChyMOVDDDcbI2aE4$>.” Brief for Petitioners 27–28. The PTO’s objection, therefore, is not to exclusive use of “https://urldefense.com/v3/__http://Booking.com__;!!DUT_TFPxUQ!So1HMo0QDdk_GL... <https://urldefense.com/v3/__http:/booking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoKbDIN6Nn7s6jAedq1tu8kIGCdfddt5BrgvsLbd3ChyMOVDDD3QvBsFY$>” as a mark, but to undue control over similar language, i.e., “booking,” that others should remain free to use. That concern attends any descriptive mark. Responsive to it, trademark law hems in the scope of such marks short of denying trademark protection altogether. Notably, a competitor’s use does not infringe a mark unless it is likely to confuse consumers. See §§1114(1), 1125(a)(1)(A); 4 McCarthy §23:1.50 (collecting state law). In assessing the likelihood of confusion, courts consider the mark’s distinctiveness: “The weaker a mark, the fewer are the junior uses that will trigger a likelihood of consumer confusion.” 2 id., §11:76. When a mark incorporates generic or highly descriptive components, consumers are less likely to think that other uses of the common element emanate from the mark’s owner. Ibid. Similarly, “[i]n a ‘crowded’ field of look-alike marks” (e.g., hotel names including the word “grand”), consumers “may have learned to carefully pick out” one mark from another. Id., §11:85. And even where some consumer confusion exists, the doctrine known as classic fair use, see id., §11:45, protects from liability anyone who uses a descriptive term, “fairly and in good faith” and “otherwise than as a mark,” merely to describe her own goods. 15 U. S. C. §1115(b)(4); see KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U. S. 111, 122–123 (2004). These doctrines guard against the anticompetitive effects the PTO identifies, ensuring that registration of “https://urldefense.com/v3/__http://Booking.com__;!!DUT_TFPxUQ!So1HMo0QDdk_GL... <https://urldefense.com/v3/__http:/booking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoKbDIN6Nn7s6jAedq1tu8kIGCdfddt5BrgvsLbd3ChyMOVDDD3QvBsFY$>” would not yield its holder a monopoly on the term “booking.” https://urldefense.com/v3/__http://Booking.com__;!!DUT_TFPxUQ!So1HMo0QDdk_GL... <https://urldefense.com/v3/__http:/booking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoKb...> concedes that “https://urldefense.com/v3/__http://Booking.com__;!!DUT_TFPxUQ!So1HMo0QDdk_GL... <https://urldefense.com/v3/__http:/booking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoKbDIN6Nn7s6jAedq1tu8kIGCdfddt5BrgvsLbd3ChyMOVDDD3QvBsFY$>” would be a “weak” mark. Tr. of Oral Arg. 66. See also id., at 42–43, 55. The mark is descriptive, https://urldefense.com/v3/__http://Booking.com__;!!DUT_TFPxUQ!So1HMo0QDdk_GL... <https://urldefense.com/v3/__http:/booking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoKb...> recognizes, making it “harder . . . to show a likelihood of confusion.” Id., at 43. Furthermore, because its mark is one of many “similarly worded marks,” https://urldefense.com/v3/__http://Booking.com__;!!DUT_TFPxUQ!So1HMo0QDdk_GL... <https://urldefense.com/v3/__http:/booking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoKb...> accepts that close variations are unlikely to infringe. Id., at 66. And https://urldefense.com/v3/__http://Booking.com__;!!DUT_TFPxUQ!So1HMo0QDdk_GL... <https://urldefense.com/v3/__http:/booking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoKb...> acknowledges that federal registration of “https://urldefense.com/v3/__http://Booking.com__;!!DUT_TFPxUQ!So1HMo0QDdk_GL... <https://urldefense.com/v3/__http:/booking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoKbDIN6Nn7s6jAedq1tu8kIGCdfddt5BrgvsLbd3ChyMOVDDD3QvBsFY$>” would not prevent competitors from using the word “booking” to describe their own services. Id., at 55.” So, those against <.+ generic term> TLDs are going to have to find some other basis to argue that there will be some sort of harm. This leaves the opponents with (1) being against them because they didn’t apply but their competitors did; (2) they are a registrar that can’t make any money on them; (3) a bias against free speech; (4) a bias against nascent trademarks. None of these are nearly as noble sounding as the fear about competitive harm, but Ginsburg has nicely dispatched that fear. Sure would be nice if the Co-chairs would allow more time, as initially promised, so that we can develop some policy. This decision by SCOTUS is very instructive and we should take the time to understand it and build guardrails around the <.+ generic term> TLDs instead of just throwing our hands up and sending nothing the Board instead of the something they asked us for. Best, Paul From: Justine Chew <justine.chew@gmail.com<mailto:justine.chew@gmail.com>> Sent: Wednesday, July 1, 2020 8:51 PM To: McGrady, Paul D. <PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>> Cc: Aikman-Scalese, Anne <AAikman@lrrc.com<mailto:AAikman@lrrc.com>>; gnso-newgtld-wg@icann.org<mailto:gnso-newgtld-wg@icann.org> Subject: Re: [Gnso-newgtld-wg] Client Alert - Supreme Court Finds https://urldefense.com/v3/__http://BOOKING.COM__;!!DUT_TFPxUQ!So1HMo0QDdk_GL... <https://urldefense.com/v3/__http:/booking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoKb...> Non-Generic And Capable Of Federal Trademark Registration Hi Paul, The link you offered is one behind a paywall, so not very useful for me as a non-subscriber. But I note that Winterfeldt IP Group has also released a client advisory which points to uncertainty and important element(s) not raised in the appeal and therefore not considered by SCOTUS. Kind regards, Justine --- On Wed, 1 Jul 2020 at 10:51, McGrady, Paul D. <PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>> wrote: Thanks Anne. All, here is the link to the actual decision: https://urldefense.com/v3/__https://www.law360.com/dockets/download/5efb4734... <https://urldefense.com/v3/__https:/www.law360.com/dockets/download/5efb47347...>. 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://urldefense.com/v3/__https:/www.taftlaw.com/general/subscribe__;!!DUT...>. For additional resources, visit Taft's COVID-19 Resource Toolkit<https://urldefense.com/v3/__https:/www.taftlaw.com/general/coronavirus-covid...>. 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<mailto: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<mailto:gnso-newgtld-wg@icann.org> Subject: [Gnso-newgtld-wg] FW: Client Alert - Supreme Court Finds https://urldefense.com/v3/__http://BOOKING.COM__;!!DUT_TFPxUQ!So1HMo0QDdk_GL... <https://urldefense.com/v3/__http:/booking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoKb...> 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 https://urldefense.com/v3/__http://booking.com__;!!DUT_TFPxUQ!So1HMo0QDdk_GL... <https://urldefense.com/v3/__http:/booking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoKb...> trademark case that Paul and I were discussing on the list, please see attached summary. 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Aikman-Scalese, Anne -
trachtenbergm＠gtlaw.com