Hear hear! The judgement is a booster shot for ICANN‘s revenue growth. Sincerely Mohamed Aslam ILIPconsulting.com<http://ilipconsulting.com/> On Jun 30, 2020, at 22:51, McGrady, Paul D. <PMcGrady@taftlaw.com> wrote:  Thanks Anne. All, here is the link to the actual decision: https://www.law360.com/dockets/download/5efb47347da17405e86713cb?doc_url=htt.... The Supreme Court strikes down the USPTO’s per se rule against allowing trademark registration for generic term + trademark. Justice Ginsburg does a great job of pointing out why people who are worried about a competitor no longer being able to use the generic word (e.g. claims that there would be a monopoly on such a term) have nothing to fear. It’s a great read. I wish we could get her on one of our calls! The same is, of course, true in ICANNland – a so-called closed generic for .hammers would not stop anyone from using “hammers” to identify hammers. And, just like the for the USPTO, a per se rule against them makes no sense. This is, no doubt, why the ICANN Board deferred the 2012 closed generic applications to the upcoming round and asked us to develop policy to deal with those deferred applications. I remain hopeful, against all nay saying to the contrary, that we can still eek out some policy here as the Board asked us to do. Best to all, Paul To receive regular COVID-19 updates from Taft, subscribe here<https://www.taftlaw.com/general/subscribe>. For additional resources, visit Taft's COVID-19 Resource Toolkit<https://www.taftlaw.com/general/coronavirus-covid-19-resource-toolkit>. This message may contain information that is attorney-client privileged, attorney work product or otherwise confidential. If you are not an intended recipient, use and disclosure of this message are prohibited. If you received this transmission in error, please notify the sender by reply e-mail and delete the message and any attachments. From: Gnso-newgtld-wg <gnso-newgtld-wg-bounces@icann.org> On Behalf Of Aikman-Scalese, Anne Sent: Tuesday, June 30, 2020 7:12 PM To: gnso-newgtld-wg@icann.org Subject: [Gnso-newgtld-wg] FW: Client Alert - Supreme Court Finds BOOKING.COM Non-Generic And Capable Of Federal Trademark Registration Dear WG members, Just in case anyone on the list is wondering about the US Supreme Court decision in the booking.com trademark case that Paul and I were discussing on the list, please see attached summary. Again, my view is this is a “secondary meaning” case with uncontested evidence that consumers recognized the domain as a source indicator of the owner’s services. Thank you, Anne Anne E. Aikman-Scalese Of Counsel 520.629.4428 office AAikman@lrrc.com<mailto:AAikman@lrrc.com> _____________________________ <image001.png> Lewis Roca Rothgerber Christie LLP One South Church Avenue, Suite 2000 Tucson, Arizona 85701-1611 lrrc.com<http://lrrc.com/> ________________________________ This message and any attachments are intended only for the use of the individual or entity to which they are addressed. If the reader of this message or an attachment is not the intended recipient or the employee or agent responsible for delivering the message or attachment to the intended recipient you are hereby notified that any dissemination, distribution or copying of this message or any attachment is strictly prohibited. If you have received this communication in error, please notify us immediately by replying to the sender. The information transmitted in this message and any attachments may be privileged, is intended only for the personal and confidential use of the intended recipients, and is covered by the Electronic Communications Privacy Act, 18 U.S.C. §2510-2521. _______________________________________________ Gnso-newgtld-wg mailing list Gnso-newgtld-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-newgtld-wg _______________________________________________ By submitting your personal data, you consent to the processing of your personal data for purposes of subscribing to this mailing list accordance with the ICANN Privacy Policy (https://www.icann.org/privacy/policy) and the website Terms of Service (https://www.icann.org/privacy/tos). You can visit the Mailman link above to change your membership status or configuration, including unsubscribing, setting digest-style delivery or disabling delivery altogether (e.g., for a vacation), and so on.

Well said Paul. +1 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 McGrady, Paul D. Sent: Tuesday, June 30, 2020 9:50 PM To: Aikman-Scalese, Anne <AAikman@lrrc.com>; gnso-newgtld-wg@icann.org Subject: Re: [Gnso-newgtld-wg] Client Alert - Supreme Court Finds https://urldefense.com/v3/__http://BOOKING.COM__;!!DUT_TFPxUQ!XJoeW5Z9Z4i9YQ... Non-Generic And Capable Of Federal Trademark Registration *EXTERNAL TO GT* 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!XJoeW5Z9Z4i9YQ... 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!XJoeW5Z9Z4i9YQ... trademark case that Paul and I were discussing on the list, please see attached summary. Again, my view is this is a “secondary meaning” case with uncontested evidence that consumers recognized the domain as a source indicator of the owner’s services. Thank you, Anne Anne E. Aikman-Scalese Of Counsel 520.629.4428 office AAikman@lrrc.com<mailto:AAikman@lrrc.com> _____________________________ [cid:image003.png@01D64F3C.BD9B9350] Lewis Roca Rothgerber Christie LLP One South Church Avenue, Suite 2000 Tucson, Arizona 85701-1611 https://urldefense.com/v3/__http://lrrc.com__;!!DUT_TFPxUQ!XJoeW5Z9Z4i9YQpJQ... <https://urldefense.com/v3/__http:/lrrc.com/__;!!DUT_TFPxUQ!W-N0c06Vo7L4eh-Tm...> ________________________________ This message and any attachments are intended only for the use of the individual or entity to which they are addressed. If the reader of this message or an attachment is not the intended recipient or the employee or agent responsible for delivering the message or attachment to the intended recipient you are hereby notified that any dissemination, distribution or copying of this message or any attachment is strictly prohibited. If you have received this communication in error, please notify us immediately by replying to the sender. The information transmitted in this message and any attachments may be privileged, is intended only for the personal and confidential use of the intended recipients, and is covered by the Electronic Communications Privacy Act, 18 U.S.C. §2510-2521. ---------------------------------------------------------------------- If you are not an intended recipient of confidential and privileged information in this email, please delete it, notify us immediately at postmaster@gtlaw.com, and do not use or disseminate the information.

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<http://Booking.com>” 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<http://Booking.com>.” Rather, the PTO fears that trademark pro­tection for “Booking.com<http://Booking.com>” could exclude or inhibit competi­tors from using the term “booking” or adopting domain names like “ebooking.com<http://ebooking.com>” or “hotel-booking.com<http://hotel-booking.com>.” Brief for Petitioners 27–28. The PTO’s objection, therefore, is not to exclusive use of “Booking.com<http://Booking.com>” 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<http://Booking.com>” would not yield its holder a monopoly on the term “booking.” Booking.com<http://Booking.com> concedes that “Booking.com<http://Booking.com>” would be a “weak” mark. Tr. of Oral Arg. 66. See also id., at 42–43, 55. The mark is descriptive, Booking.com<http://Booking.com> 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<http://Booking.com> accepts that close variations are unlikely to infringe. Id., at 66. And Booking.com<http://Booking.com> acknowledges that federal registration of “Booking.com<http://Booking.com>” 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> Sent: Wednesday, July 1, 2020 8:51 PM To: McGrady, Paul D. <PMcGrady@taftlaw.com> Cc: Aikman-Scalese, Anne <AAikman@lrrc.com>; 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 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=htt.... The Supreme Court strikes down the USPTO’s per se rule against allowing trademark registration for generic term + trademark. Justice Ginsburg does a great job of pointing out why people who are worried about a competitor no longer being able to use the generic word (e.g. claims that there would be a monopoly on such a term) have nothing to fear. It’s a great read. I wish we could get her on one of our calls! The same is, of course, true in ICANNland – a so-called closed generic for .hammers would not stop anyone from using “hammers” to identify hammers. And, just like the for the USPTO, a per se rule against them makes no sense. This is, no doubt, why the ICANN Board deferred the 2012 closed generic applications to the upcoming round and asked us to develop policy to deal with those deferred applications. I remain hopeful, against all nay saying to the contrary, that we can still eek out some policy here as the Board asked us to do. Best to all, Paul To receive regular COVID-19 updates from Taft, subscribe here<https://www.taftlaw.com/general/subscribe>. For additional resources, visit Taft's COVID-19 Resource Toolkit<https://www.taftlaw.com/general/coronavirus-covid-19-resource-toolkit>. This message may contain information that is attorney-client privileged, attorney work product or otherwise confidential. If you are not an intended recipient, use and disclosure of this message are prohibited. If you received this transmission in error, please notify the sender by reply e-mail and delete the message and any attachments. From: Gnso-newgtld-wg <gnso-newgtld-wg-bounces@icann.org<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<http://BOOKING.COM> Non-Generic And Capable Of Federal Trademark Registration Dear WG members, Just in case anyone on the list is wondering about the US Supreme Court decision in the booking.com<http://booking.com> trademark case that Paul and I were discussing on the list, please see attached summary. Again, my view is this is a “secondary meaning” case with uncontested evidence that consumers recognized the domain as a source indicator of the owner’s services. Thank you, Anne Anne E. Aikman-Scalese Of Counsel 520.629.4428 office AAikman@lrrc.com<mailto:AAikman@lrrc.com> _____________________________ [cid:image001.png@01D64FF0.365F2A00] Lewis Roca Rothgerber Christie LLP One South Church Avenue, Suite 2000 Tucson, Arizona 85701-1611 lrrc.com<http://lrrc.com/> ________________________________ This message and any attachments are intended only for the use of the individual or entity to which they are addressed. If the reader of this message or an attachment is not the intended recipient or the employee or agent responsible for delivering the message or attachment to the intended recipient you are hereby notified that any dissemination, distribution or copying of this message or any attachment is strictly prohibited. If you have received this communication in error, please notify us immediately by replying to the sender. The information transmitted in this message and any attachments may be privileged, is intended only for the personal and confidential use of the intended recipients, and is covered by the Electronic Communications Privacy Act, 18 U.S.C. §2510-2521. _______________________________________________ Gnso-newgtld-wg mailing list Gnso-newgtld-wg@icann.org<mailto:Gnso-newgtld-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-newgtld-wg _______________________________________________ By submitting your personal data, you consent to the processing of your personal data for purposes of subscribing to this mailing list accordance with the ICANN Privacy Policy (https://www.icann.org/privacy/policy) and the website Terms of Service (https://www.icann.org/privacy/tos). You can visit the Mailman link above to change your membership status or configuration, including unsubscribing, setting digest-style delivery or disabling delivery altogether (e.g., for a vacation), and so on.

A Justine, an interesting theoretical question, for sure. By ICANN is a California public benefit corporation, so SCOTUS is the relevant highest court so I think we have to be very careful not to dismiss what we can learn from the opinion. From: Justine Chew <justine.chew@gmail.com> Sent: Wednesday, July 1, 2020 10:06 PM To: McGrady, Paul D. <PMcGrady@taftlaw.com> Cc: 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 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<http://Booking.com>” 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<http://Booking.com>.” Rather, the PTO fears that trademark pro­tection for “Booking.com<http://Booking.com>” could exclude or inhibit competi­tors from using the term “booking” or adopting domain names like “ebooking.com<http://ebooking.com>” or “hotel-booking.com<http://hotel-booking.com>.” Brief for Petitioners 27–28. The PTO’s objection, therefore, is not to exclusive use of “Booking.com<http://Booking.com>” 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<http://Booking.com>” would not yield its holder a monopoly on the term “booking.” Booking.com<http://Booking.com> concedes that “Booking.com<http://Booking.com>” would be a “weak” mark. Tr. of Oral Arg. 66. See also id., at 42–43, 55. The mark is descriptive, Booking.com<http://Booking.com> 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<http://Booking.com> accepts that close variations are unlikely to infringe. Id., at 66. And Booking.com<http://Booking.com> acknowledges that federal registration of “Booking.com<http://Booking.com>” 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<http://BOOKING.COM> 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=htt.... The Supreme Court strikes down the USPTO’s per se rule against allowing trademark registration for generic term + trademark. Justice Ginsburg does a great job of pointing out why people who are worried about a competitor no longer being able to use the generic word (e.g. claims that there would be a monopoly on such a term) have nothing to fear. It’s a great read. I wish we could get her on one of our calls! The same is, of course, true in ICANNland – a so-called closed generic for .hammers would not stop anyone from using “hammers” to identify hammers. And, just like the for the USPTO, a per se rule against them makes no sense. This is, no doubt, why the ICANN Board deferred the 2012 closed generic applications to the upcoming round and asked us to develop policy to deal with those deferred applications. I remain hopeful, against all nay saying to the contrary, that we can still eek out some policy here as the Board asked us to do. Best to all, Paul To receive regular COVID-19 updates from Taft, subscribe here<https://www.taftlaw.com/general/subscribe>. For additional resources, visit Taft's COVID-19 Resource Toolkit<https://www.taftlaw.com/general/coronavirus-covid-19-resource-toolkit>. This message may contain information that is attorney-client privileged, attorney work product or otherwise confidential. If you are not an intended recipient, use and disclosure of this message are prohibited. If you received this transmission in error, please notify the sender by reply e-mail and delete the message and any attachments. From: Gnso-newgtld-wg <gnso-newgtld-wg-bounces@icann.org<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<http://BOOKING.COM> Non-Generic And Capable Of Federal Trademark Registration Dear WG members, Just in case anyone on the list is wondering about the US Supreme Court decision in the booking.com<http://booking.com> trademark case that Paul and I were discussing on the list, please see attached summary. Again, my view is this is a “secondary meaning” case with uncontested evidence that consumers recognized the domain as a source indicator of the owner’s services. Thank you, Anne Anne E. Aikman-Scalese Of Counsel 520.629.4428 office AAikman@lrrc.com<mailto:AAikman@lrrc.com> _____________________________ [cid:image001.png@01D64FF0.365F2A00] Lewis Roca Rothgerber Christie LLP One South Church Avenue, Suite 2000 Tucson, Arizona 85701-1611 lrrc.com<http://lrrc.com/> ________________________________ This message and any attachments are intended only for the use of the individual or entity to which they are addressed. If the reader of this message or an attachment is not the intended recipient or the employee or agent responsible for delivering the message or attachment to the intended recipient you are hereby notified that any dissemination, distribution or copying of this message or any attachment is strictly prohibited. If you have received this communication in error, please notify us immediately by replying to the sender. The information transmitted in this message and any attachments may be privileged, is intended only for the personal and confidential use of the intended recipients, and is covered by the Electronic Communications Privacy Act, 18 U.S.C. §2510-2521. _______________________________________________ Gnso-newgtld-wg mailing list Gnso-newgtld-wg@icann.org<mailto:Gnso-newgtld-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-newgtld-wg _______________________________________________ By submitting your personal data, you consent to the processing of your personal data for purposes of subscribing to this mailing list accordance with the ICANN Privacy Policy (https://www.icann.org/privacy/policy) and the website Terms of Service (https://www.icann.org/privacy/tos). You can visit the Mailman link above to change your membership status or configuration, including unsubscribing, setting digest-style delivery or disabling delivery altogether (e.g., for a vacation), and so on.

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> 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> 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> 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 <http://booking.com/>” 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 <http://booking.com/>.” Rather, the PTO fears that trademark pro­tection for “Booking.com <http://booking.com/>” could exclude or inhibit competi­tors from using the term “booking” or adopting domain names like “ebooking.com” or “ hotel-booking.com.” Brief for Petitioners 27–28. The PTO’s objection, therefore, is not to exclusive use of “Booking.com <http://booking.com/>” 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 <http://booking.com/>” would not yield its holder a monopoly on the term “booking.” Booking.com <http://booking.com/> concedes that “Booking.com <http://booking.com/>” would be a “weak” mark. Tr. of Oral Arg. 66. See also *id.*, at 42–43, 55. The mark is descriptive, Booking.com <http://booking.com/> 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 <http://booking.com/> accepts that close variations are unlikely to infringe. *Id.*, at 66. And Booking.com <http://booking.com/> acknowledges that federal registration of “Booking.com <http://booking.com/>” 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> *Sent:* Wednesday, July 1, 2020 8:51 PM *To:* McGrady, Paul D. <PMcGrady@taftlaw.com> *Cc:* Aikman-Scalese, Anne <AAikman@lrrc.com>; gnso-newgtld-wg@icann.org *Subject:* Re: [Gnso-newgtld-wg] Client Alert - Supreme Court Finds BOOKING.COM <http://booking.com/> 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> wrote:

Thanks Anne.

All, here is the link to the actual decision: https://www.law360.com/dockets/download/5efb47347da17405e86713cb?doc_url=htt.... The Supreme Court strikes down the USPTO’s per se rule against allowing trademark registration for generic term + trademark. Justice Ginsburg does a great job of pointing out why people who are worried about a competitor no longer being able to use the generic word (e.g. claims that there would be a monopoly on such a term) have nothing to fear. It’s a great read. I wish we could get her on one of our calls!

The same is, of course, true in ICANNland – a so-called closed generic for .hammers would not stop anyone from using “hammers” to identify hammers. And, just like the for the USPTO, a per se rule against them makes no sense. This is, no doubt, why the ICANN Board deferred the 2012 closed generic applications to the upcoming round and asked us to develop policy to deal with those deferred applications. I remain hopeful, against all nay saying to the contrary, that we can still eek out some policy here as the Board asked us to do.

Best to all,

Paul

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*From:* Gnso-newgtld-wg <gnso-newgtld-wg-bounces@icann.org> *On Behalf Of *Aikman-Scalese, Anne *Sent:* Tuesday, June 30, 2020 7:12 PM *To:* gnso-newgtld-wg@icann.org *Subject:* [Gnso-newgtld-wg] FW: Client Alert - Supreme Court Finds BOOKING.COM <http://booking.com/> Non-Generic And Capable Of Federal Trademark Registration

Dear WG members,

Just in case anyone on the list is wondering about the US Supreme Court decision in the booking.com trademark case that Paul and I were discussing on the list, please see attached summary. Again, my view is this is a “secondary meaning” case with uncontested evidence that consumers recognized the domain as a source indicator of the owner’s services.

Thank you,

Anne

*Anne E. Aikman-Scalese*

Of Counsel

520.629.4428 office

AAikman@lrrc.com

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Lewis Roca Rothgerber Christie LLP

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_______________________________________________ Gnso-newgtld-wg mailing list Gnso-newgtld-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-newgtld-wg _______________________________________________ By submitting your personal data, you consent to the processing of your personal data for purposes of subscribing to this mailing list accordance with the ICANN Privacy Policy (https://www.icann.org/privacy/policy) and the website Terms of Service (https://www.icann.org/privacy/tos). You can visit the Mailman link above to change your membership status or configuration, including unsubscribing, setting digest-style delivery or disabling delivery altogether (e.g., for a vacation), and so on.

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>; Rubens Kuhl <rubensk@nic.br> Cc: 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 < <mailto:justine.chew@gmail.com> justine.chew@gmail.com> Sent: Wednesday, July 1, 2020 11:44 PM To: Rubens Kuhl < <mailto:rubensk@nic.br> rubensk@nic.br>; McGrady, Paul D. < <mailto:PMcGrady@taftlaw.com> PMcGrady@taftlaw.com> Cc: <mailto:gnso-newgtld-wg@icann.org> 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 “ <http://booking.com/> Booking.com” would hinder competitors. But the PTO does not assert that others seeking to offer online hotel-reservation services need to call their services “ <http://booking.com/> Booking.com.” Rather, the PTO fears that trademark pro­tection for “ <http://booking.com/> Booking.com” could exclude or inhibit competi­tors from using the term “booking” or adopting domain names like “ <http://ebooking.com/> ebooking.com” or “ <http://hotel-booking.com/> hotel-booking.com.” Brief for Petitioners 27–28. The PTO’s objection, therefore, is not to exclusive use of “ <http://booking.com/> Booking.com” 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 “ <http://booking.com/> Booking.com” would not yield its holder a monopoly on the term “booking.” <http://booking.com/> Booking.com concedes that “ <http://booking.com/> Booking.com” would be a “weak” mark. Tr. of Oral Arg. 66. See also id., at 42–43, 55. The mark is descriptive, <http://booking.com/> Booking.com recog­nizes, making it “harder . . . to show a likelihood of confu­sion.” Id., at 43. Furthermore, because its mark is one of many “similarly worded marks,” <http://booking.com/> Booking.com accepts that close variations are unlikely to infringe. Id., at 66. And <http://booking.com/> Booking.com acknowledges that federal registration of “ <http://booking.com/> Booking.com” 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 < <mailto:justine.chew@gmail.com> justine.chew@gmail.com> Sent: Wednesday, July 1, 2020 8:51 PM To: McGrady, Paul D. < <mailto:PMcGrady@taftlaw.com> PMcGrady@taftlaw.com> Cc: Aikman-Scalese, Anne < <mailto:AAikman@lrrc.com> AAikman@lrrc.com>; <mailto:gnso-newgtld-wg@icann.org> gnso-newgtld-wg@icann.org Subject: Re: [Gnso-newgtld-wg] Client Alert - Supreme Court Finds <http://booking.com/> BOOKING.COM 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=htt... <https://www.law360.com/dockets/download/5efb47347da17405e86713cb?doc_url=htt...> &label=Opinion. 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, <https://www.taftlaw.com/general/subscribe> subscribe here. For additional resources, visit Taft's COVID-19 <https://www.taftlaw.com/general/coronavirus-covid-19-resource-toolkit> Resource Toolkit. This message may contain information that is attorney-client privileged, attorney work product or otherwise confidential. If you are not an intended recipient, use and disclosure of this message are prohibited. If you received this transmission in error, please notify the sender by reply e-mail and delete the message and any attachments. From: Gnso-newgtld-wg <gnso-newgtld-wg-bounces@icann.org <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 <http://booking.com/> Non-Generic And Capable Of Federal Trademark Registration Dear WG members, Just in case anyone on the list is wondering about the US Supreme Court decision in the booking.com <http://booking.com/> trademark case that Paul and I were discussing on the list, please see attached summary. Again, my view is this is a “secondary meaning” case with uncontested evidence that consumers recognized the domain as a source indicator of the owner’s services. Thank you, Anne Anne E. Aikman-Scalese Of Counsel 520.629.4428 office <mailto:AAikman@lrrc.com> AAikman@lrrc.com _____________________________ <image001.png> Lewis Roca Rothgerber Christie LLP One South Church Avenue, Suite 2000 Tucson, Arizona 85701-1611 <http://lrrc.com/> lrrc.com _____ This message and any attachments are intended only for the use of the individual or entity to which they are addressed. If the reader of this message or an attachment is not the intended recipient or the employee or agent responsible for delivering the message or attachment to the intended recipient you are hereby notified that any dissemination, distribution or copying of this message or any attachment is strictly prohibited. If you have received this communication in error, please notify us immediately by replying to the sender. 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Greg, I will sleep better tonight! I get your point, and the “good faith use” makes big sense. My only concern is that I know how ruthless scalper are – and to what length (inlcuding TM registrations in sunrises) they go. That’s why I get scared when I see decisions like this one. But your explanation makes sense. Thanks, Alexander From: Greg Shatan [mailto:gregshatanipc@gmail.com] Sent: Donnerstag, 2. Juli 2020 19:14 To: Alexander Schubert <alexander@schubert.berlin> Cc: 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 Alexander, I'll let Paul answer the question you posed to him. I will note that "the right to deny others" is really a patent law concept (i.e., that the specific primary right granted is a negative right, not a positive right). Trademark rights are primarily positive rights, i.e., the right to use a trademark to identify one's goods and services and to distinguish them from the goods and services of others. These rights include the ability to enforce those rights against others, since a right without a remedy is not much of a right. The scope of enforcement for a given trademark will vary significantly for various reasons, many rooted in the goal of avoiding potential consumer confusion. The language from Justice Ginsburg (quoted by Paul) discusses the limits that Booking.com might encounter in seeking to enforce its trademark rights. You may wish to consider whether your question is consistent with the guidance provided by Justice Ginsburg. You may also wish to consider whether there is any non-hypothetical possibility that a business will use <example.com <http://example.com> > as its own trademark when it does not own the domain name <example.com <http://example.com> >. Considering such use even hypothetically, it seems unlikely that such use would be a "good faith" use. This makes such good faith hypothetical use an edge case of an edge case of a hypothetical that is unlikely to be anything other than hypothetical. I humbly submit that this class of hypothetical is almost uniquely ill-suited to be used as a basis for policymaking. (Note, however, that law professors love to pose such hypotheticals, precisely to cause pain and suffering to their students....) Best regards, Greg On Thu, Jul 2, 2020 at 11:48 AM Alexander Schubert <alexander@schubert.berlin <mailto:alexander@schubert.berlin> > wrote: 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 <http://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 <http://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 <http://booking.com> ” TM (once they have it)? Thanks, Alexander From: Gnso-newgtld-wg [mailto:gnso-newgtld-wg-bounces@icann.org <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 <http://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 < <mailto:justine.chew@gmail.com> justine.chew@gmail.com> Sent: Wednesday, July 1, 2020 11:44 PM To: Rubens Kuhl < <mailto:rubensk@nic.br> rubensk@nic.br>; McGrady, Paul D. < <mailto:PMcGrady@taftlaw.com> PMcGrady@taftlaw.com> Cc: <mailto:gnso-newgtld-wg@icann.org> gnso-newgtld-wg@icann.org Subject: Re: [Gnso-newgtld-wg] Client Alert - Supreme Court Finds BOOKING.COM <http://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 “ <http://booking.com/> Booking.com” would hinder competitors. But the PTO does not assert that others seeking to offer online hotel-reservation services need to call their services “ <http://booking.com/> Booking.com.” Rather, the PTO fears that trademark pro­tection for “ <http://booking.com/> Booking.com” could exclude or inhibit competi­tors from using the term “booking” or adopting domain names like “ <http://ebooking.com/> ebooking.com” or “ <http://hotel-booking.com/> hotel-booking.com.” Brief for Petitioners 27–28. The PTO’s objection, therefore, is not to exclusive use of “ <http://booking.com/> Booking.com” 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 “ <http://booking.com/> Booking.com” would not yield its holder a monopoly on the term “booking.” <http://booking.com/> Booking.com concedes that “ <http://booking.com/> Booking.com” would be a “weak” mark. Tr. of Oral Arg. 66. See also id., at 42–43, 55. The mark is descriptive, <http://booking.com/> Booking.com recog­nizes, making it “harder . . . to show a likelihood of confu­sion.” Id., at 43. Furthermore, because its mark is one of many “similarly worded marks,” <http://booking.com/> Booking.com accepts that close variations are unlikely to infringe. Id., at 66. And <http://booking.com/> Booking.com acknowledges that federal registration of “ <http://booking.com/> Booking.com” 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 < <mailto:justine.chew@gmail.com> justine.chew@gmail.com> Sent: Wednesday, July 1, 2020 8:51 PM To: McGrady, Paul D. < <mailto:PMcGrady@taftlaw.com> PMcGrady@taftlaw.com> Cc: Aikman-Scalese, Anne < <mailto:AAikman@lrrc.com> AAikman@lrrc.com>; <mailto:gnso-newgtld-wg@icann.org> gnso-newgtld-wg@icann.org Subject: Re: [Gnso-newgtld-wg] Client Alert - Supreme Court Finds <http://booking.com/> BOOKING.COM 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=htt... <https://www.law360.com/dockets/download/5efb47347da17405e86713cb?doc_url=htt...> &label=Opinion. 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, <https://www.taftlaw.com/general/subscribe> subscribe here. For additional resources, visit Taft's COVID-19 <https://www.taftlaw.com/general/coronavirus-covid-19-resource-toolkit> Resource Toolkit. This message may contain information that is attorney-client privileged, attorney work product or otherwise confidential. If you are not an intended recipient, use and disclosure of this message are prohibited. If you received this transmission in error, please notify the sender by reply e-mail and delete the message and any attachments. From: Gnso-newgtld-wg <gnso-newgtld-wg-bounces@icann.org <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 <http://booking.com/> Non-Generic And Capable Of Federal Trademark Registration Dear WG members, Just in case anyone on the list is wondering about the US Supreme Court decision in the booking.com <http://booking.com/> trademark case that Paul and I were discussing on the list, please see attached summary. Again, my view is this is a “secondary meaning” case with uncontested evidence that consumers recognized the domain as a source indicator of the owner’s services. Thank you, Anne Anne E. Aikman-Scalese Of Counsel 520.629.4428 office <mailto:AAikman@lrrc.com> AAikman@lrrc.com _____________________________ <image001.png> Lewis Roca Rothgerber Christie LLP One South Church Avenue, Suite 2000 Tucson, Arizona 85701-1611 <http://lrrc.com/> lrrc.com _____ This message and any attachments are intended only for the use of the individual or entity to which they are addressed. If the reader of this message or an attachment is not the intended recipient or the employee or agent responsible for delivering the message or attachment to the intended recipient you are hereby notified that any dissemination, distribution or copying of this message or any attachment is strictly prohibited. If you have received this communication in error, please notify us immediately by replying to the sender. 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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> On Behalf Of McGrady, Paul D. Sent: Wednesday, July 8, 2020 6:31 AM To: 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] ________________________________ 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<http://booking.com/>” 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<http://booking.com/>.” Rather, the PTO fears that trademark pro­tection for “Booking.com<http://booking.com/>” could exclude or inhibit competi­tors from using the term “booking” or adopting domain names like “ebooking.com<http://ebooking.com/>” or “hotel-booking.com<http://hotel-booking.com/>.” Brief for Petitioners 27–28. The PTO’s objection, therefore, is not to exclusive use of “Booking.com<http://booking.com/>” 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<http://booking.com/>” would not yield its holder a monopoly on the term “booking.” Booking.com<http://booking.com/> concedes that “Booking.com<http://booking.com/>” would be a “weak” mark. Tr. of Oral Arg. 66. See also id., at 42–43, 55. The mark is descriptive, Booking.com<http://booking.com/> 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<http://booking.com/> accepts that close variations are unlikely to infringe. Id., at 66. And Booking.com<http://booking.com/> acknowledges that federal registration of “Booking.com<http://booking.com/>” 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<http://booking.com/> 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=htt.... The Supreme Court strikes down the USPTO’s per se rule against allowing trademark registration for generic term + trademark. Justice Ginsburg does a great job of pointing out why people who are worried about a competitor no longer being able to use the generic word (e.g. claims that there would be a monopoly on such a term) have nothing to fear. It’s a great read. I wish we could get her on one of our calls! The same is, of course, true in ICANNland – a so-called closed generic for .hammers would not stop anyone from using “hammers” to identify hammers. And, just like the for the USPTO, a per se rule against them makes no sense. This is, no doubt, why the ICANN Board deferred the 2012 closed generic applications to the upcoming round and asked us to develop policy to deal with those deferred applications. I remain hopeful, against all nay saying to the contrary, that we can still eek out some policy here as the Board asked us to do. Best to all, Paul To receive regular COVID-19 updates from Taft, subscribe here<https://www.taftlaw.com/general/subscribe>. For additional resources, visit Taft's COVID-19 Resource Toolkit<https://www.taftlaw.com/general/coronavirus-covid-19-resource-toolkit>. This message may contain information that is attorney-client privileged, attorney work product or otherwise confidential. If you are not an intended recipient, use and disclosure of this message are prohibited. If you received this transmission in error, please notify the sender by reply e-mail and delete the message and any attachments. From: Gnso-newgtld-wg <gnso-newgtld-wg-bounces@icann.org<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<http://booking.com/> Non-Generic And Capable Of Federal Trademark Registration Dear WG members, Just in case anyone on the list is wondering about the US Supreme Court decision in the booking.com<http://booking.com/> trademark case that Paul and I were discussing on the list, please see attached summary. Again, my view is this is a “secondary meaning” case with uncontested evidence that consumers recognized the domain as a source indicator of the owner’s services. Thank you, Anne Anne E. Aikman-Scalese Of Counsel 520.629.4428 office AAikman@lrrc.com<mailto:AAikman@lrrc.com> _____________________________ <image001.png> Lewis Roca Rothgerber Christie LLP One South Church Avenue, Suite 2000 Tucson, Arizona 85701-1611 lrrc.com<http://lrrc.com/> ________________________________ This message and any attachments are intended only for the use of the individual or entity to which they are addressed. If the reader of this message or an attachment is not the intended recipient or the employee or agent responsible for delivering the message or attachment to the intended recipient you are hereby notified that any dissemination, distribution or copying of this message or any attachment is strictly prohibited. If you have received this communication in error, please notify us immediately by replying to the sender. 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While the legal discussion is interesting, and please keep it going, I need to comment that the discussion of closed generics is not much if they are legal or not, but if they are helpful or not for the domain identifiers system. It's also not about the existence of a possible helpful use case, but whether those possibly useful ones outweighs the risks of the bad ones. Rubens

On 8 Jul 2020, at 15:37, Marc Trachtenberg via Gnso-newgtld-wg <gnso-newgtld-wg@icann.org> wrote:

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 <http://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/>

<image001.jpg>

From: Gnso-newgtld-wg [mailto:gnso-newgtld-wg-bounces@icann.org <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 <http://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 <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-NoIXhLvoKbDIN6Nn7s6jAedq1tu8kIGCdfddt5BrgvsLbd3ChyMOVDDD3QvBsFY$>accepts that close variations are unlikely to infringe. Id., at 66. And Booking.com <https://urldefense.com/v3/__http:/booking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoKb...> acknowledges that federal registration of “Booking.com <https://urldefense.com/v3/__http:/booking.com/__;!!DUT_TFPxUQ!Wzo-NoIXhLvoKbDIN6Nn7s6jAedq1tu8kIGCdfddt5BrgvsLbd3ChyMOVDDD3QvBsFY$>” 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=htt... <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

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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. If you have received this communication in error, please notify us immediately by replying to the sender. The information transmitted in this message and any attachments may be privileged, is intended only for the personal and confidential use of the intended recipients, and is covered by the Electronic Communications Privacy Act, 18 U.S.C. §2510-2521.

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This message and any attachments are intended only for the use of the individual or entity to which they are addressed. If the reader of this message or an attachment is not the intended recipient or the employee or agent responsible for delivering the message or attachment to the intended recipient you are hereby notified that any dissemination, distribution or copying of this message or any attachment is strictly prohibited. If you have received this communication in error, please notify us immediately by replying to the sender. The information transmitted in this message and any attachments may be privileged, is intended only for the personal and confidential use of the intended recipients, and is covered by the Electronic Communications Privacy Act, 18 U.S.C. §2510-2521. If you are not an intended recipient of confidential and privileged information in this email, please delete it, notify us immediately at postmaster@gtlaw.com <mailto:postmaster@gtlaw.com>, and do not use or disseminate the information. _______________________________________________ Gnso-newgtld-wg mailing list Gnso-newgtld-wg@icann.org https://mm.icann.org/mailman/listinfo/gnso-newgtld-wg _______________________________________________ By submitting your personal data, you consent to the processing of your personal data for purposes of subscribing to this mailing list accordance with the ICANN Privacy Policy (https://www.icann.org/privacy/policy) and the website Terms of Service (https://www.icann.org/privacy/tos). You can visit the Mailman link above to change your membership status or configuration, including unsubscribing, setting digest-style delivery or disabling delivery altogether (e.g., for a vacation), and so on.

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 <trachtenbergm@gtlaw.com> Sent: Wednesday, July 8, 2020 11:38 AM 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, 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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Hi Anne, Your comment gets down to the microscopic level and I was trying to write for everyone on this list- not just the lawyers. Ginsburg’s opinion speaks for itself. Anyone who is opposed to <. + generic term> TLDs because they could some-how result in people not being able to use generic terms in their generic context have nothing to fear. The arguments against <. + generic term> based upon such misguided fears have simply gone “poof” (not that the arguments were ever very persuasive). Best, Paul From: Aikman-Scalese, Anne <AAikman@lrrc.com> Sent: Wednesday, July 8, 2020 11:59 AM To: McGrady, Paul D. <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 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<http://booking.com/>” 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<http://booking.com/>.” Rather, the PTO fears that trademark pro­tection for “Booking.com<http://booking.com/>” could exclude or inhibit competi­tors from using the term “booking” or adopting domain names like “ebooking.com<http://ebooking.com/>” or “hotel-booking.com<http://hotel-booking.com/>.” Brief for Petitioners 27–28. The PTO’s objection, therefore, is not to exclusive use of “Booking.com<http://booking.com/>” 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<http://booking.com/>” would not yield its holder a monopoly on the term “booking.” Booking.com<http://booking.com/> concedes that “Booking.com<http://booking.com/>” would be a “weak” mark. Tr. of Oral Arg. 66. See also id., at 42–43, 55. The mark is descriptive, Booking.com<http://booking.com/> 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<http://booking.com/> accepts that close variations are unlikely to infringe. Id., at 66. And Booking.com<http://booking.com/> acknowledges that federal registration of “Booking.com<http://booking.com/>” 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<http://booking.com/> 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=htt.... The Supreme Court strikes down the USPTO’s per se rule against allowing trademark registration for generic term + trademark. Justice Ginsburg does a great job of pointing out why people who are worried about a competitor no longer being able to use the generic word (e.g. claims that there would be a monopoly on such a term) have nothing to fear. It’s a great read. I wish we could get her on one of our calls! The same is, of course, true in ICANNland – a so-called closed generic for .hammers would not stop anyone from using “hammers” to identify hammers. And, just like the for the USPTO, a per se rule against them makes no sense. This is, no doubt, why the ICANN Board deferred the 2012 closed generic applications to the upcoming round and asked us to develop policy to deal with those deferred applications. I remain hopeful, against all nay saying to the contrary, that we can still eek out some policy here as the Board asked us to do. Best to all, Paul To receive regular COVID-19 updates from Taft, subscribe here<https://www.taftlaw.com/general/subscribe>. For additional resources, visit Taft's COVID-19 Resource Toolkit<https://www.taftlaw.com/general/coronavirus-covid-19-resource-toolkit>. This message may contain information that is attorney-client privileged, attorney work product or otherwise confidential. If you are not an intended recipient, use and disclosure of this message are prohibited. If you received this transmission in error, please notify the sender by reply e-mail and delete the message and any attachments. From: Gnso-newgtld-wg <gnso-newgtld-wg-bounces@icann.org<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<http://booking.com/> Non-Generic And Capable Of Federal Trademark Registration Dear WG members, Just in case anyone on the list is wondering about the US Supreme Court decision in the booking.com<http://booking.com/> trademark case that Paul and I were discussing on the list, please see attached summary. Again, my view is this is a “secondary meaning” case with uncontested evidence that consumers recognized the domain as a source indicator of the owner’s services. Thank you, Anne Anne E. Aikman-Scalese Of Counsel 520.629.4428 office AAikman@lrrc.com<mailto:AAikman@lrrc.com> _____________________________ <image001.png> Lewis Roca Rothgerber Christie LLP One South Church Avenue, Suite 2000 Tucson, Arizona 85701-1611 lrrc.com<http://lrrc.com/> ________________________________ This message and any attachments are intended only for the use of the individual or entity to which they are addressed. If the reader of this message or an attachment is not the intended recipient or the employee or agent responsible for delivering the message or attachment to the intended recipient you are hereby notified that any dissemination, distribution or copying of this message or any attachment is strictly prohibited. If you have received this communication in error, please notify us immediately by replying to the sender. 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Thanks Anne. I think you want to keep talking about the specific trademark at issue in that case. I’m not sure if that will be helpful to this group or not, but I leave that to you. My point, as I have now stated several times, for bringing the case to this group’s attention has to do with the Court’s assurance that trademark laws already in place protect against the exact kinds of competitive harms that those who are opposed to <. + generic term> TLDs based their arguments upon. Best, Paul From: Aikman-Scalese, Anne <AAikman@lrrc.com> Sent: Wednesday, July 8, 2020 4:30 PM To: McGrady, Paul D. <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 Well, since you invoke Justice Ginsburg’s majority opinion, the following text from that opinion is worth noting in terms of the limits of the ruling to secondary meaning (acquired distinctiveness) attaching to second level domain registrations only: “As the PTO and the dissent elsewhere acknowledge, only one entity can occupy a particular Internet domain name at a time, so “[a] con­sumer who is familiar with that aspect of the domain-namesystem can infer that BOOKING.COM refers to some spe­cific entity.” From: McGrady, Paul D. <PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>> Sent: Wednesday, July 8, 2020 2:25 PM To: Aikman-Scalese, Anne <AAikman@lrrc.com<mailto:AAikman@lrrc.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] ________________________________ Hi Anne, Your comment gets down to the microscopic level and I was trying to write for everyone on this list- not just the lawyers. Ginsburg’s opinion speaks for itself. Anyone who is opposed to <. + generic term> TLDs because they could some-how result in people not being able to use generic terms in their generic context have nothing to fear. The arguments against <. + generic term> based upon such misguided fears have simply gone “poof” (not that the arguments were ever very persuasive). Best, Paul From: Aikman-Scalese, Anne <AAikman@lrrc.com<mailto:AAikman@lrrc.com>> 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 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<http://booking.com/>” 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<http://booking.com/>.” Rather, the PTO fears that trademark pro­tection for “Booking.com<http://booking.com/>” could exclude or inhibit competi­tors from using the term “booking” or adopting domain names like “ebooking.com<http://ebooking.com/>” or “hotel-booking.com<http://hotel-booking.com/>.” Brief for Petitioners 27–28. The PTO’s objection, therefore, is not to exclusive use of “Booking.com<http://booking.com/>” 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<http://booking.com/>” would not yield its holder a monopoly on the term “booking.” Booking.com<http://booking.com/> concedes that “Booking.com<http://booking.com/>” would be a “weak” mark. Tr. of Oral Arg. 66. See also id., at 42–43, 55. The mark is descriptive, Booking.com<http://booking.com/> 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<http://booking.com/> accepts that close variations are unlikely to infringe. Id., at 66. And Booking.com<http://booking.com/> acknowledges that federal registration of “Booking.com<http://booking.com/>” 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<http://booking.com/> 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=htt.... The Supreme Court strikes down the USPTO’s per se rule against allowing trademark registration for generic term + trademark. Justice Ginsburg does a great job of pointing out why people who are worried about a competitor no longer being able to use the generic word (e.g. claims that there would be a monopoly on such a term) have nothing to fear. It’s a great read. I wish we could get her on one of our calls! The same is, of course, true in ICANNland – a so-called closed generic for .hammers would not stop anyone from using “hammers” to identify hammers. And, just like the for the USPTO, a per se rule against them makes no sense. This is, no doubt, why the ICANN Board deferred the 2012 closed generic applications to the upcoming round and asked us to develop policy to deal with those deferred applications. I remain hopeful, against all nay saying to the contrary, that we can still eek out some policy here as the Board asked us to do. Best to all, Paul To receive regular COVID-19 updates from Taft, subscribe here<https://www.taftlaw.com/general/subscribe>. For additional resources, visit Taft's COVID-19 Resource Toolkit<https://www.taftlaw.com/general/coronavirus-covid-19-resource-toolkit>. This message may contain information that is attorney-client privileged, attorney work product or otherwise confidential. If you are not an intended recipient, use and disclosure of this message are prohibited. If you received this transmission in error, please notify the sender by reply e-mail and delete the message and any attachments. From: Gnso-newgtld-wg <gnso-newgtld-wg-bounces@icann.org<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<http://booking.com/> Non-Generic And Capable Of Federal Trademark Registration Dear WG members, Just in case anyone on the list is wondering about the US Supreme Court decision in the booking.com<http://booking.com/> trademark case that Paul and I were discussing on the list, please see attached summary. Again, my view is this is a “secondary meaning” case with uncontested evidence that consumers recognized the domain as a source indicator of the owner’s services. Thank you, Anne Anne E. 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Thanks Kathy. I understand what you are saying, but Ginsburg is quite unavoidable: “These doctrines guard against the anticompetitive ef­fects the PTO identifies, ensuring that registration of “Booking.com<http://booking.com/>” would not yield its holder a monopoly on the term “booking.” Fears that a <. + generic term> TLD would grant a monopoly resulting in other people no longer being able to use that generic term simply have no basis in the law. All of that said, all of these emails (while good fun) are somewhat moot since the co-chairs unilaterally cut off discussion on this topic. Perhaps the co-chairs will note all the back and forth conversation on this topic and will unilaterally un-cutoff discussions. Clearly there remains lots the WG wants to say on this matter. Best, Paul From: Kathy Kleiman <kathy@kathykleiman.com> Sent: Wednesday, July 8, 2020 4:28 PM To: McGrady, Paul D. <PMcGrady@taftlaw.com>; alexander@schubert.berlin; gnso-newgtld-wg@icann.org Subject: Re: [Gnso-newgtld-wg] Client Alert - Supreme Court FindsBOOKING.COM Non-Generic And Capable Of Federal TrademarkRegistration Hi Paul, << The point of the booking.com decision is that it shreds the arguments that <. + generic term> TLDs will somehow cause a competitive harm. Shreds >> Happily, the very words of the opinion ensure that this is not the case. The fundamental principle -- that generics belong to all and are not "registerable" to one competitor over another - is absolutely upheld in the very opening paragraphs of Justice Ginsberg's opinion. In the first line of the 2nd paragraph, Justice Ginsberg writes: "A generic name—the name of a class of products or services—is ineligible for federal trademark registration." Let me share the entire paragraph: "A generic name—the name of a class of products or services—is ineligible for federal trademark registration. The word “booking,” the parties do not dispute, is generic for hotel-reservation services. “Booking.com” must also be generic, the PTO maintains, under an encompassing rule the PTO currently urges us to adopt: The combination of a generic word and “.com” is generic." So "booking" remains generic for hotel reservation services; trucking remains generic for various trucking services; search remains generic for various searching services. None of that is changed by this decision. The bar against registrations of generics is, in fact, upheld and further reinforced. Further, Justice Ginsberg points out in the decision (as Anne does in her summary) that this case is a narrow one: looking at the "combination" of a "generic word" and ".com". As you know, Paul, the Supreme Court operates on narrow decisions -- it must decide a case based on the specific facts before it and the legal issues they raise. Chief Justice Roberts summarized this position for graduating Georgetown Law School students in 2006 by saying: "If it's not necessary to decide more to dispose of a case, in my view, it's necessary not to decide more." (Associate Press, 2006) So this is a <generic> + TLD case. Justice Ginsburg further reiterates the concept that generics shall not be registered in the US Trademark Office in their generic sense farther down in the case, including: "See Restatement (Third) of Unfair Competition Sec. 15, p. 142 (1993); Otokoyama Co. v. Wine of Japan Import, Inc., 175 F.3d 266, 270 (CA2 1999) ("[E]veryone may use [generic terms] to refer to the goods they designate.")." And there is more... but I will spare the non-lawyers in the group :-). If anything, this case reiterates everything we have been saying about generic words-- that they must remain open to all in the given business or industry. And that monopolization of a generic term by a single competitor would be a utmost violation of fair competition rules. This case reinforces these basic principles. Thus monopolization of a generic terms -- a .CLOUD, .SEARCH, .BOOK -- by a single competitor of the business or industry class would raise a deep, deep concern for "unfair competition" (as Justice Ginsburg notes above). Best, Kathy ----- Original Message ----- From: "McGrady Paul D." <PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>> To: "alexander@schubert.berlin<mailto:alexander@schubert.berlin>" <alexander@schubert.berlin<mailto:alexander@schubert.berlin>>, "gnso-newgtld-wg@icann.org<mailto:gnso-newgtld-wg@icann.org>" <gnso-newgtld-wg@icann.org<mailto:gnso-newgtld-wg@icann.org>> Cc: Sent: Wed, 8 Jul 2020 13:31:03 +0000 Subject: Re: [Gnso-newgtld-wg] Client Alert - Supreme Court Finds BOOKING.COM Non-Generic And Capable Of Federal Trademark Registration 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<http://booking.com/>” 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<http://booking.com/>.” Rather, the PTO fears that trademark pro­tection for “Booking.com<http://booking.com/>” could exclude or inhibit competi­tors from using the term “booking” or adopting domain names like “ebooking.com<http://ebooking.com/>” or “hotel-booking.com<http://hotel-booking.com/>.” Brief for Petitioners 27–28. The PTO’s objection, therefore, is not to exclusive use of “Booking.com<http://booking.com/>” 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<http://booking.com/>” would not yield its holder a monopoly on the term “booking.” Booking.com<http://booking.com/> concedes that “Booking.com<http://booking.com/>” would be a “weak” mark. Tr. of Oral Arg. 66. See also id., at 42–43, 55. The mark is descriptive, Booking.com<http://booking.com/> 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<http://booking.com/> accepts that close variations are unlikely to infringe. Id., at 66. And Booking.com<http://booking.com/> acknowledges that federal registration of “Booking.com<http://booking.com/>” 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<http://booking.com/> 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=htt.... The Supreme Court strikes down the USPTO’s per se rule against allowing trademark registration for generic term + trademark. Justice Ginsburg does a great job of pointing out why people who are worried about a competitor no longer being able to use the generic word (e.g. claims that there would be a monopoly on such a term) have nothing to fear. It’s a great read. I wish we could get her on one of our calls! The same is, of course, true in ICANNland – a so-called closed generic for .hammers would not stop anyone from using “hammers” to identify hammers. And, just like the for the USPTO, a per se rule against them makes no sense. This is, no doubt, why the ICANN Board deferred the 2012 closed generic applications to the upcoming round and asked us to develop policy to deal with those deferred applications. I remain hopeful, against all nay saying to the contrary, that we can still eek out some policy here as the Board asked us to do. Best to all, Paul To receive regular COVID-19 updates from Taft, subscribe here<https://www.taftlaw.com/general/subscribe>. For additional resources, visit Taft's COVID-19 Resource Toolkit<https://www.taftlaw.com/general/coronavirus-covid-19-resource-toolkit>. This message may contain information that is attorney-client privileged, attorney work product or otherwise confidential If you are not an intended recipient, use and disclosure of this message are prohibited. If you received this transmission in error, please notify the sender by reply e-mail and delete the message and any attachments. From: Gnso-newgtld-wg <gnso-newgtld-wg-bounces@icann.org<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<http://booking.com/> Non-Generic And Capable Of Federal Trademark Registration Dear WG members, Just in case anyone on the list is wondering about the US Supreme Court decision in the booking.com<http://booking.com/> trademark case that Paul and I were discussing on the list, please see attached summary. Again, my view is this is a “secondary meaning” case with uncontested evidence that consumers recognized the domain as a source indicator of the owner’s services. Thank you, Anne Anne E. 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All, Just to respond on behalf of this co-chair that I don not believe we cut off discussion of this issue unilaterally. In fact, the mere fact that many are still posting materials related to this topic shows that discussion is ongoing. That said, cut-offs for the draft final report have to be made so we can get materials out to the community to comment on. And therefore: 1. Just as with other recent substantive comments that have come in, we are asking that in the Draft Final Report Public comment period, those with new information (perhaps like this Supreme Court Case, or the comment from the 3 At Large members, etc.) file them as public comments. To treat the Closed Generic issue any differently than others would be unfair to others that have submitted their views on other topics. 1. I agree in part with what Kathy has said, that I am not sure that this discussion of the US Supreme Court changes the fact that from a substantive viewpoint, this Working Group at this point is not in agreement on the treatment of Closed Generics in Subsequent Rounds. There is not even agreement on what the Status Quo would be, or even agreement necessarily from Individual Board members from back in 2013/14 as to whether their decision was to apply only to that round or to others. A per se rule from the USPTO that was potentially invalidated doesn’t change where we are. 1. The part where I don’t agree with Kathy is that additional language be needed from the last version. Some wanted us to state that the Board “banned” closed generics in the last round, others wanted us to state that the board did not opine on what should happen in the next round, and we believe that the compromise position is to take all subjectivity out of the “No Agreement” paragraph and just quote from the actual Board Resolution. Putting in the exact Board language cannot be subjective. It is what it is. Thanks again for continuing this discussion. It would be great if we can get some more good discussion on the 2 remaining issues: Private Resolution of Contention Sets/Auctions and the Predictability Model. Please look at the Proposal #4 in the draft text as well as the e-mails from Jim P., Paul M. and others for the Private Resolution/Auctions discussion. Come ready to discuss, compromise and finalize (in that order). Thanks. Jeff Neuman JJN Solutions, LLC Founder & CEO +1.202.549.5079 Vienna, VA 22180 Jeff@JJNSolutions.com http://jjnsolutions.com<http://jjnsolutions.com/> From: Gnso-newgtld-wg <gnso-newgtld-wg-bounces@icann.org> On Behalf Of Kathy Kleiman Sent: Wednesday, July 8, 2020 6:15 PM To: McGrady Paul D. <PMcGrady@taftlaw.com>; Kathy Kleiman <kathy@kathykleiman.com>; alexander@schubert.berlin; gnso-newgtld-wg@icann.org Subject: Re: [Gnso-newgtld-wg] Client Alert - Supreme Court FindsBOOKING.COM Non-Generic And Capable Of Federal TrademarkRegistration Hi Paul, First, I need to note that when you copy from some Supreme Court decisions, it comes out really BIG! Second, are we reading the same case :-)? I'm seeing a second level domain name case decided by the Supreme Court -- and one that absolutely reaffirms the traditional principle that the US Trademark Office will not register generic words for generic uses. And we know why -- because it would be utterly unfair to others in the same field. Happy to look at another case if you recommend it... I don't think anything would happen from reopening the discussion, but I do think Closed Generics 2.7.3 needs to be clarified to indicate our stalemate on what to do next. You started the process (tx!) and I'll build on it. Working on this now! Best, Kathy ----- Original Message ----- From: "McGrady Paul D." <PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>> To: "Kathy Kleiman" <kathy@kathykleiman.com<mailto:kathy@kathykleiman.com>>, "alexander@schubert.berlin<mailto:alexander@schubert.berlin>" <alexander@schubert.berlin<mailto:alexander@schubert.berlin>>, "gnso-newgtld-wg@icann.org<mailto:gnso-newgtld-wg@icann.org>" <gnso-newgtld-wg@icann.org<mailto:gnso-newgtld-wg@icann.org>> Cc: Sent: Wed, 8 Jul 2020 21:57:00 +0000 Subject: RE: [Gnso-newgtld-wg] Client Alert - Supreme Court FindsBOOKING.COM Non-Generic And Capable Of Federal TrademarkRegistration Thanks Kathy. I understand what you are saying, but Ginsburg is quite unavoidable: “These doctrines guard against the anticompetitive ef­fects the PTO identifies, ensuring that registration of “Booking.com<http://booking.com/>” would not yield its holder a monopoly on the term “booking.” Fears that a <. + generic term> TLD would grant a monopoly resulting in other people no longer being able to use that generic term simply have no basis in the law. All of that said, all of these emails (while good fun) are somewhat moot since the co-chairs unilaterally cut off discussion on this topic. Perhaps the co-chairs will note all the back and forth conversation on this topic and will unilaterally un-cutoff discussions. Clearly there remains lots the WG wants to say on this matter. Best, Paul From: Kathy Kleiman <kathy@kathykleiman.com<mailto:kathy@kathykleiman.com>> Sent: Wednesday, July 8, 2020 4:28 PM 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 FindsBOOKING.COM Non-Generic And Capable Of Federal TrademarkRegistration Hi Paul, << The point of the booking.com decision is that it shreds the arguments that <. + generic term> TLDs will somehow cause a competitive harm. Shreds >> Happily, the very words of the opinion ensure that this is not the case. The fundamental principle -- that generics belong to all and are not "registerable" to one competitor over another - is absolutely upheld in the very opening paragraphs of Justice Ginsberg's opinion. In the first line of the 2nd paragraph, Justice Ginsberg writes: "A generic name—the name of a class of products or services—is ineligible for federal trademark registration." Let me share the entire paragraph: "A generic name—the name of a class of products or services—is ineligible for federal trademark registration. The word “booking,” the parties do not dispute, is generic for hotel-reservation services. “Booking.com” must also be generic, the PTO maintains, under an encompassing rule the PTO currently urges us to adopt: The combination of a generic word and “.com” is generic." So "booking" remains generic for hotel reservation services; trucking remains generic for various trucking services; search remains generic for various searching services. None of that is changed by this decision. The bar against registrations of generics is, in fact, upheld and further reinforced. Further, Justice Ginsberg points out in the decision (as Anne does in her summary) that this case is a narrow one: looking at the "combination" of a "generic word" and ".com". As you know, Paul, the Supreme Court operates on narrow decisions -- it must decide a case based on the specific facts before it and the legal issues they raise. Chief Justice Roberts summarized this position for graduating Georgetown Law School students in 2006 by saying: "If it's not necessary to decide more to dispose of a case, in my view, it's necessary not to decide more." (Associate Press, 2006) So this is a <generic> + TLD case. Justice Ginsburg further reiterates the concept that generics shall not be registered in the US Trademark Office in their generic sense farther down in the case, including: "See Restatement (Third) of Unfair Competition Sec. 15, p. 142 (1993); Otokoyama Co. v. Wine of Japan Import, Inc., 175 F.3d 266, 270 (CA2 1999) ("[E]veryone may use [generic terms] to refer to the goods they designate.")." And there is more... but I will spare the non-lawyers in the group :-). If anything, this case reiterates everything we have been saying about generic words-- that they must remain open to all in the given business or industry. And that monopolization of a generic term by a single competitor would be a utmost violation of fair competition rules. This case reinforces these basic principles. Thus monopolization of a generic terms -- a .CLOUD, .SEARCH, .BOOK -- by a single competitor of the business or industry class would raise a deep, deep concern for "unfair competition" (as Justice Ginsburg notes above). Best, Kathy ----- Original Message ----- From: "McGrady Paul D." <PMcGrady@taftlawcom<mailto:PMcGrady@taftlaw.com>> To: "alexander@schubert.berlin<mailto:alexander@schubert.berlin>" <alexander@schubert.berlin<mailto:alexander@schubertberlin>>, "gnso-newgtld-wg@icann.org<mailto:gnso-newgtld-wg@icann.org>" <gnso-newgtld-wg@icann.org<mailto:gnso-newgtld-wg@icann.org>> Cc: Sent: Wed, 8 Jul 2020 13:31:03 +0000 Subject: Re: [Gnso-newgtld-wg] Client Alert - Supreme Court Finds BOOKING.COM Non-Generic And Capable Of Federal Trademark Registration 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<http://booking.com/>” 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<http://booking.com/>.” Rather, the PTO fears that trademark pro­tection for “Booking.com<http://booking.com/>” could exclude or inhibit competi­tors from using the term “booking” or adopting domain names like “ebooking.com<http://ebooking.com/>” or “hotel-booking.com<http://hotel-booking.com/>.” Brief for Petitioners 27–28. The PTO’s objection, therefore, is not to exclusive use of “Booking.com<http://booking.com/>” 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<http://booking.com/>” would not yield its holder a monopoly on the term “booking.” Bookingcom<http://booking.com/> concedes that “Booking.com<http://booking.com/>” would be a “weak” mark. Tr. of Oral Arg. 66. See also id., at 42–43, 55. The mark is descriptive, Booking.com<http://booking.com/> 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<http://booking.com/> accepts that close variations are unlikely to infringe. Id., at 66. And Booking.com<http://booking.com/> acknowledges that federal registration of “Booking.com<http://booking.com/>” 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<http://booking.com/> 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=htt.... The Supreme Court strikes down the USPTO’s per se rule against allowing trademark registration for generic term + trademark. Justice Ginsburg does a great job of pointing out why people who are worried about a competitor no longer being able to use the generic word (e.g. claims that there would be a monopoly on such a term) have nothing to fear. It’s a great read. I wish we could get her on one of our calls! The same is, of course, true in ICANNland – a so-called closed generic for .hammers would not stop anyone from using “hammers” to identify hammers. And, just like the for the USPTO, a per se rule against them makes no sense. This is, no doubt, why the ICANN Board deferred the 2012 closed generic applications to the upcoming round and asked us to develop policy to deal with those deferred applications. I remain hopeful, against all nay saying to the contrary, that we can still eek out some policy here as the Board asked us to do. Best to all, Paul To receive regular COVID-19 updates from Taft, subscribe here<https://www.taftlaw.com/general/subscribe>. For additional resources, visit Taft's COVID-19 Resource Toolkit<https://www.taftlaw.com/general/coronavirus-covid-19-resource-toolkit>. This message may contain information that is attorney-client privileged, attorney work product or otherwise confidential If you are not an intended recipient, use and disclosure of this message are prohibited. If you received this transmission in error, please notify the sender by reply e-mail and delete the message and any attachments. From: Gnso-newgtld-wg <gnso-newgtld-wg-bounces@icann.org<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<http://booking.com/> Non-Generic And Capable Of Federal Trademark Registration Dear WG members, Just in case anyone on the list is wondering about the US Supreme Court decision in the booking.com<http://booking.com/> trademark case that Paul and I were discussing on the list, please see attached summary. Again, my view is this is a “secondary meaning” case with uncontested evidence that consumers recognized the domain as a source indicator of the owner’s services. Thank you, Anne Anne E. Aikman-Scalese Of Counsel 520.629.4428 office AAikman@lrrc.com<mailto:AAikman@lrrc.com> _____________________________ <image001.png> Lewis Roca Rothgerber Christie LLP One South Church Avenue, Suite 2000 Tucson, Arizona 85701-1611 lrrc.com<http://lrrc.com/> This message and any attachments are intended only for the use of the individual or entity to which they are addressed. If the reader of this message or an attachment is not the intended recipient or the employee or agent responsible for delivering the message or attachment to the intended recipient you are hereby notified that any dissemination, distribution or copying of this message or any attachment is strictly prohibited. If you have received this communication in error, please notify us immediately by replying to the sender. 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Paul – Ginsburg says “booking” is generic and “booking.com” is not (based on consumer evidence of acquired distinctiveness and the fact that in relation to source indicator, only one owner controls the second level url.) So is your point that a Closed Generic TLD for .booking is somehow not generic and is not anti-competitive? What takes this proposed Closed Generic TLD for .booking out of the anti-competitive generic realm? Is it the dot? Thank you, Anne From: Gnso-newgtld-wg <gnso-newgtld-wg-bounces@icann.org> On Behalf Of McGrady, Paul D. Sent: Wednesday, July 8, 2020 2:57 PM To: Kathy Kleiman <kathy@kathykleiman.com>; alexander@schubert.berlin; gnso-newgtld-wg@icann.org Subject: Re: [Gnso-newgtld-wg] Client Alert - Supreme Court FindsBOOKING.COM Non-Generic And Capable Of Federal TrademarkRegistration [EXTERNAL] ________________________________ Thanks Kathy. I understand what you are saying, but Ginsburg is quite unavoidable: “These doctrines guard against the anticompetitive ef­fects the PTO identifies, ensuring that registration of “Booking.com<http://booking.com/>” would not yield its holder a monopoly on the term “booking.” Fears that a <. + generic term> TLD would grant a monopoly resulting in other people no longer being able to use that generic term simply have no basis in the law. All of that said, all of these emails (while good fun) are somewhat moot since the co-chairs unilaterally cut off discussion on this topic. Perhaps the co-chairs will note all the back and forth conversation on this topic and will unilaterally un-cutoff discussions. Clearly there remains lots the WG wants to say on this matter. Best, Paul From: Kathy Kleiman <kathy@kathykleiman.com<mailto:kathy@kathykleiman.com>> Sent: Wednesday, July 8, 2020 4:28 PM 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 FindsBOOKING.COM Non-Generic And Capable Of Federal TrademarkRegistration Hi Paul, << The point of the booking.com decision is that it shreds the arguments that <. + generic term> TLDs will somehow cause a competitive harm. Shreds >> Happily, the very words of the opinion ensure that this is not the case. The fundamental principle -- that generics belong to all and are not "registerable" to one competitor over another - is absolutely upheld in the very opening paragraphs of Justice Ginsberg's opinion. In the first line of the 2nd paragraph, Justice Ginsberg writes: "A generic name—the name of a class of products or services—is ineligible for federal trademark registration." Let me share the entire paragraph: "A generic name—the name of a class of products or services—is ineligible for federal trademark registration. The word “booking,” the parties do not dispute, is generic for hotel-reservation services. “Booking.com” must also be generic, the PTO maintains, under an encompassing rule the PTO currently urges us to adopt: The combination of a generic word and “.com” is generic." So "booking" remains generic for hotel reservation services; trucking remains generic for various trucking services; search remains generic for various searching services. None of that is changed by this decision. The bar against registrations of generics is, in fact, upheld and further reinforced. Further, Justice Ginsberg points out in the decision (as Anne does in her summary) that this case is a narrow one: looking at the "combination" of a "generic word" and ".com". As you know, Paul, the Supreme Court operates on narrow decisions -- it must decide a case based on the specific facts before it and the legal issues they raise. Chief Justice Roberts summarized this position for graduating Georgetown Law School students in 2006 by saying: "If it's not necessary to decide more to dispose of a case, in my view, it's necessary not to decide more." (Associate Press, 2006) So this is a <generic> + TLD case. Justice Ginsburg further reiterates the concept that generics shall not be registered in the US Trademark Office in their generic sense farther down in the case, including: "See Restatement (Third) of Unfair Competition Sec. 15, p. 142 (1993); Otokoyama Co. v. Wine of Japan Import, Inc., 175 F.3d 266, 270 (CA2 1999) ("[E]veryone may use [generic terms] to refer to the goods they designate.")." And there is more... but I will spare the non-lawyers in the group :-). If anything, this case reiterates everything we have been saying about generic words-- that they must remain open to all in the given business or industry. And that monopolization of a generic term by a single competitor would be a utmost violation of fair competition rules. This case reinforces these basic principles. Thus monopolization of a generic terms -- a .CLOUD, .SEARCH, .BOOK -- by a single competitor of the business or industry class would raise a deep, deep concern for "unfair competition" (as Justice Ginsburg notes above). Best, Kathy ----- Original Message ----- From: "McGrady Paul D." <PMcGrady@taftlaw.com<mailto:PMcGrady@taftlaw.com>> To: "alexander@schubert.berlin<mailto:alexander@schubert.berlin>" <alexander@schubert.berlin<mailto:alexander@schubert.berlin>>, "gnso-newgtld-wg@icann.org<mailto:gnso-newgtld-wg@icann.org>" <gnso-newgtld-wg@icann.org<mailto:gnso-newgtld-wg@icann.org>> Cc: Sent: Wed, 8 Jul 2020 13:31:03 +0000 Subject: Re: [Gnso-newgtld-wg] Client Alert - Supreme Court Finds BOOKING.COM Non-Generic And Capable Of Federal Trademark Registration 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<http://booking.com/>” 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<http://booking.com/>.” Rather, the PTO fears that trademark pro­tection for “Booking.com<http://booking.com/>” could exclude or inhibit competi­tors from using the term “booking” or adopting domain names like “ebooking.com<http://ebooking.com/>” or “hotel-booking.com<http://hotel-booking.com/>.” Brief for Petitioners 27–28. The PTO’s objection, therefore, is not to exclusive use of “Booking.com<http://booking.com/>” 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<http://booking.com/>” would not yield its holder a monopoly on the term “booking.” Booking.com<http://booking.com/> concedes that “Booking.com<http://booking.com/>” would be a “weak” mark. Tr. of Oral Arg. 66. See also id., at 42–43, 55. The mark is descriptive, Booking.com<http://booking.com/> 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<http://booking.com/> accepts that close variations are unlikely to infringe. Id., at 66. And Booking.com<http://booking.com/> acknowledges that federal registration of “Booking.com<http://booking.com/>” 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<http://booking.com/> 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=htt.... The Supreme Court strikes down the USPTO’s per se rule against allowing trademark registration for generic term + trademark. Justice Ginsburg does a great job of pointing out why people who are worried about a competitor no longer being able to use the generic word (e.g. claims that there would be a monopoly on such a term) have nothing to fear. It’s a great read. I wish we could get her on one of our calls! The same is, of course, true in ICANNland – a so-called closed generic for .hammers would not stop anyone from using “hammers” to identify hammers. And, just like the for the USPTO, a per se rule against them makes no sense. This is, no doubt, why the ICANN Board deferred the 2012 closed generic applications to the upcoming round and asked us to develop policy to deal with those deferred applications. I remain hopeful, against all nay saying to the contrary, that we can still eek out some policy here as the Board asked us to do. Best to all, Paul To receive regular COVID-19 updates from Taft, subscribe here<https://www.taftlaw.com/general/subscribe>. For additional resources, visit Taft's COVID-19 Resource Toolkit<https://www.taftlaw.com/general/coronavirus-covid-19-resource-toolkit>. This message may contain information that is attorney-client privileged, attorney work product or otherwise confidential If you are not an intended recipient, use and disclosure of this message are prohibited. If you received this transmission in error, please notify the sender by reply e-mail and delete the message and any attachments. From: Gnso-newgtld-wg <gnso-newgtld-wg-bounces@icann.org<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<http://booking.com/> Non-Generic And Capable Of Federal Trademark Registration Dear WG members, Just in case anyone on the list is wondering about the US Supreme Court decision in the booking.com<http://booking.com/> trademark case that Paul and I were discussing on the list, please see attached summary. Again, my view is this is a “secondary meaning” case with uncontested evidence that consumers recognized the domain as a source indicator of the owner’s services. Thank you, Anne Anne E. Aikman-Scalese Of Counsel 520.629.4428 office AAikman@lrrc.com<mailto:AAikman@lrrc.com> _____________________________ <image001.png> Lewis Roca Rothgerber Christie LLP One South Church Avenue, Suite 2000 Tucson, Arizona 85701-1611 lrrc.com<http://lrrc.com/> ________________________________ This message and any attachments are intended only for the use of the individual or entity to which they are addressed. If the reader of this message or an attachment is not the intended recipient or the employee or agent responsible for delivering the message or attachment to the intended recipient you are hereby notified that any dissemination, distribution or copying of this message or any attachment is strictly prohibited. If you have received this communication in error, please notify us immediately by replying to the sender. 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Dear Greg, I hear you and agree. But if you register a TM you have quite some time before you must start to use it. And it’s not too difficult to engage in some “pro forma” use. My main concern is that people start registering future premium domains like “hotels.dallas” as TMs (for hotel bookings). Then once the gTLD comes into existence: try extracting ransom from the registrant (if they use the domain for hotel bookings). Something tells me that there is a way to legally justify that a future owner of “hotels.dallas” can make use of his domain for hotel bookings without violating a potential TM “hotels.dallas”. TM cracks: Could you point me in the right direction? I am happy for Booking.com that they managed to protect their asset. It would just be a catastrophe if this would lead to loopholes through which future registries lose all their premium inventory. Thanks, Alexander From: Gnso-newgtld-wg [mailto:gnso-newgtld-wg-bounces@icann.org] On Behalf Of Greg Shatan Sent: Donnerstag, 2. Juli 2020 18:50 To: McGrady, Paul D. <PMcGrady@taftlaw.com> Cc: 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 All, First, let me note that I represent Booking.com in matters unrelated to intellectual property generally, trademarks more specifically or to this matter specifically. "Generic trademark" is an oxymoron. A term that is generic in one context can be descriptive, suggestive or arbitrary when used as a trademark. It all depends on context. If by "generic trademark," one means a trademark that uses a word that is also a noun used to identify an object -- it still depends on context. It should be noted that the US Supreme Court specifically identified Booking.com as a "descriptive trademark." As for the "pharmacy.com <http://pharmacy.com> " question -- with some specific exceptions, a trademark cannot be registered in the US without use by the applicant. So it could only be registered by someone who had already started using it as a trademark. Practically speaking, no one but Walgreen's would start using it as a trademark, since such use would lead consumers to the domain name owned by Walgreen's. There is much more nuance to these questions (or more accurately, to the answers). A lot of this nuance can be deduced by reading the Supreme Court opinion. Greg On Thu, Jul 2, 2020 at 11:13 AM McGrady, Paul D. <PMcGrady@taftlaw.com <mailto:PMcGrady@taftlaw.com> > wrote: 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 <http://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 “ <http://booking.com/> Booking.com” would hinder competitors. But the PTO does not assert that others seeking to offer online hotel-reservation services need to call their services “ <http://booking.com/> Booking.com.” Rather, the PTO fears that trademark pro­tection for “ <http://booking.com/> Booking.com” could exclude or inhibit competi­tors from using the term “booking” or adopting domain names like “ <http://ebooking.com/> ebooking.com” or “ <http://hotel-booking.com/> hotel-booking.com.” Brief for Petitioners 27–28. The PTO’s objection, therefore, is not to exclusive use of “ <http://booking.com/> Booking.com” 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 “ <http://booking.com/> Booking.com” would not yield its holder a monopoly on the term “booking.” <http://booking.com/> Booking.com concedes that “ <http://booking.com/> Booking.com” would be a “weak” mark. Tr. of Oral Arg. 66. See also id., at 42–43, 55. The mark is descriptive, <http://booking.com/> Booking.com recog­nizes, making it “harder . . . to show a likelihood of confu­sion.” Id., at 43. Furthermore, because its mark is one of many “similarly worded marks,” <http://booking.com/> Booking.com accepts that close variations are unlikely to infringe. Id., at 66. And <http://booking.com/> Booking.com acknowledges that federal registration of “ <http://booking.com/> Booking.com” 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 <http://booking.com/> 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=htt... <https://www.law360.com/dockets/download/5efb47347da17405e86713cb?doc_url=htt...> &label=Opinion. 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, <https://www.taftlaw.com/general/subscribe> subscribe here. For additional resources, visit Taft's COVID-19 <https://www.taftlaw.com/general/coronavirus-covid-19-resource-toolkit> Resource Toolkit. This message may contain information that is attorney-client privileged, attorney work product or otherwise confidential. If you are not an intended recipient, use and disclosure of this message are prohibited. If you received this transmission in error, please notify the sender by reply e-mail and delete the message and any attachments. From: Gnso-newgtld-wg <gnso-newgtld-wg-bounces@icann.org <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 <http://booking.com/> Non-Generic And Capable Of Federal Trademark Registration Dear WG members, Just in case anyone on the list is wondering about the US Supreme Court decision in the booking.com <http://booking.com/> trademark case that Paul and I were discussing on the list, please see attached summary. Again, my view is this is a “secondary meaning” case with uncontested evidence that consumers recognized the domain as a source indicator of the owner’s services. Thank you, Anne Anne E. Aikman-Scalese Of Counsel 520.629.4428 office <mailto:AAikman@lrrc.com> AAikman@lrrc.com _____________________________ <image001.png> Lewis Roca Rothgerber Christie LLP One South Church Avenue, Suite 2000 Tucson, Arizona 85701-1611 <http://lrrc.com/> lrrc.com _____ This message and any attachments are intended only for the use of the individual or entity to which they are addressed. If the reader of this message or an attachment is not the intended recipient or the employee or agent responsible for delivering the message or attachment to the intended recipient you are hereby notified that any dissemination, distribution or copying of this message or any attachment is strictly prohibited. If you have received this communication in error, please notify us immediately by replying to the sender. The information transmitted in this message and any attachments may be privileged, is intended only for the personal and confidential use of the intended recipients, and is covered by the Electronic Communications Privacy Act, 18 U.S.C. §2510-2521. _______________________________________________ Gnso-newgtld-wg mailing list Gnso-newgtld-wg@icann.org <mailto:Gnso-newgtld-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-newgtld-wg _______________________________________________ By submitting your personal data, you consent to the processing of your personal data for purposes of subscribing to this mailing list accordance with the ICANN Privacy Policy (https://www.icann.org/privacy/policy) and the website Terms of Service (https://www.icann.org/privacy/tos). You can visit the Mailman link above to change your membership status or configuration, including unsubscribing, setting digest-style delivery or disabling delivery altogether (e.g., for a vacation), and so on. _______________________________________________ Gnso-newgtld-wg mailing list Gnso-newgtld-wg@icann.org <mailto:Gnso-newgtld-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-newgtld-wg _______________________________________________ By submitting your personal data, you consent to the processing of your personal data for purposes of subscribing to this mailing list accordance with the ICANN Privacy Policy (https://www.icann.org/privacy/policy) and the website Terms of Service (https://www.icann.org/privacy/tos). You can visit the Mailman link above to change your membership status or configuration, including unsubscribing, setting digest-style delivery or disabling delivery altogether (e.g., for a vacation), and so on. _______________________________________________ Gnso-newgtld-wg mailing list Gnso-newgtld-wg@icann.org <mailto:Gnso-newgtld-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-newgtld-wg _______________________________________________ By submitting your personal data, you consent to the processing of your personal data for purposes of subscribing to this mailing list accordance with the ICANN Privacy Policy (https://www.icann.org/privacy/policy) and the website Terms of Service (https://www.icann.org/privacy/tos). You can visit the Mailman link above to change your membership status or configuration, including unsubscribing, setting digest-style delivery or disabling delivery altogether (e.g., for a vacation), and so on. _______________________________________________ Gnso-newgtld-wg mailing list Gnso-newgtld-wg@icann.org <mailto:Gnso-newgtld-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-newgtld-wg _______________________________________________ By submitting your personal data, you consent to the processing of your personal data for purposes of subscribing to this mailing list accordance with the ICANN Privacy Policy (https://www.icann.org/privacy/policy) and the website Terms of Service (https://www.icann.org/privacy/tos). You can visit the Mailman link above to change your membership status or configuration, including unsubscribing, setting digest-style delivery or disabling delivery altogether (e.g., for a vacation), and so on.

WIPO isn’t a trademark registry itself, it only coordinates filings and treaties. National laws apply to each application for which a country is designated. Best, Paul From: Gnso-newgtld-wg <gnso-newgtld-wg-bounces@icann.org> On Behalf Of Rubens Kuhl Sent: Wednesday, July 1, 2020 10:53 PM To: 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 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<http://booking.com/>” 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<http://booking.com/>.” Rather, the PTO fears that trademark pro­tection for “Booking.com<http://booking.com/>” could exclude or inhibit competi­tors from using the term “booking” or adopting domain names like “ebooking.com<http://ebooking.com/>” or “hotel-booking.com<http://hotel-booking.com/>.” Brief for Petitioners 27–28. The PTO’s objection, therefore, is not to exclusive use of “Booking.com<http://booking.com/>” 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<http://booking.com/>” would not yield its holder a monopoly on the term “booking.” Booking.com<http://booking.com/> concedes that “Booking.com<http://booking.com/>” would be a “weak” mark. Tr. of Oral Arg. 66. See also id., at 42–43, 55. The mark is descriptive, Booking.com<http://booking.com/> 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<http://booking.com/> accepts that close variations are unlikely to infringe. Id., at 66. And Booking.com<http://booking.com/> acknowledges that federal registration of “Booking.com<http://booking.com/>” 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<http://booking.com/> 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=htt.... The Supreme Court strikes down the USPTO’s per se rule against allowing trademark registration for generic term + trademark. Justice Ginsburg does a great job of pointing out why people who are worried about a competitor no longer being able to use the generic word (e.g. claims that there would be a monopoly on such a term) have nothing to fear. It’s a great read. I wish we could get her on one of our calls! The same is, of course, true in ICANNland – a so-called closed generic for .hammers would not stop anyone from using “hammers” to identify hammers. And, just like the for the USPTO, a per se rule against them makes no sense. This is, no doubt, why the ICANN Board deferred the 2012 closed generic applications to the upcoming round and asked us to develop policy to deal with those deferred applications. I remain hopeful, against all nay saying to the contrary, that we can still eek out some policy here as the Board asked us to do. Best to all, Paul To receive regular COVID-19 updates from Taft, subscribe here<https://www.taftlaw.com/general/subscribe>. For additional resources, visit Taft's COVID-19 Resource Toolkit<https://www.taftlaw.com/general/coronavirus-covid-19-resource-toolkit>. This message may contain information that is attorney-client privileged, attorney work product or otherwise confidential. If you are not an intended recipient, use and disclosure of this message are prohibited. If you received this transmission in error, please notify the sender by reply e-mail and delete the message and any attachments. From: Gnso-newgtld-wg <gnso-newgtld-wg-bounces@icann.org<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<http://booking.com/> Non-Generic And Capable Of Federal Trademark Registration Dear WG members, Just in case anyone on the list is wondering about the US Supreme Court decision in the booking.com<http://booking.com/> trademark case that Paul and I were discussing on the list, please see attached summary. Again, my view is this is a “secondary meaning” case with uncontested evidence that consumers recognized the domain as a source indicator of the owner’s services. Thank you, Anne Anne E. Aikman-Scalese Of Counsel 520.629.4428 office AAikman@lrrc.com<mailto:AAikman@lrrc.com> _____________________________ <image001.png> Lewis Roca Rothgerber Christie LLP One South Church Avenue, Suite 2000 Tucson, Arizona 85701-1611 lrrc.com<http://lrrc.com/> ________________________________ This message and any attachments are intended only for the use of the individual or entity to which they are addressed. If the reader of this message or an attachment is not the intended recipient or the employee or agent responsible for delivering the message or attachment to the intended recipient you are hereby notified that any dissemination, distribution or copying of this message or any attachment is strictly prohibited. If you have received this communication in error, please notify us immediately by replying to the sender. The information transmitted in this message and any attachments may be privileged, is intended only for the personal and confidential use of the intended recipients, and is covered by the Electronic Communications Privacy Act, 18 U.S.C. §2510-2521. _______________________________________________ Gnso-newgtld-wg mailing list Gnso-newgtld-wg@icann.org<mailto:Gnso-newgtld-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-newgtld-wg _______________________________________________ By submitting your personal data, you consent to the processing of your personal data for purposes of subscribing to this mailing list accordance with the ICANN Privacy Policy (https://www.icann.org/privacy/policy) and the website Terms of Service (https://www.icann.org/privacy/tos). You can visit the Mailman link above to change your membership status or configuration, including unsubscribing, setting digest-style delivery or disabling delivery altogether (e.g., for a vacation), and so on. _______________________________________________ Gnso-newgtld-wg mailing list Gnso-newgtld-wg@icann.org<mailto:Gnso-newgtld-wg@icann.org> https://mm.icann.org/mailman/listinfo/gnso-newgtld-wg _______________________________________________ By submitting your personal data, you consent to the processing of your personal data for purposes of subscribing to this mailing list accordance with the ICANN Privacy Policy (https://www.icann.org/privacy/policy) and the website Terms of Service (https://www.icann.org/privacy/tos). You can visit the Mailman link above to change your membership status or configuration, including unsubscribing, setting digest-style delivery or disabling delivery altogether (e.g., for a vacation), and so on.