Brief for Amici Curiae Boston Patent Law Association in USPTO v. Booking.com
Volume 51, Issue 1
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2019 Ⓒ Boston Patent Law Association
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Message from the President Michael Bergman
Foreign Counsel Membership Invitation
Minutes of the Annual Meeting
Brief for Amici Curiae Boston Patent Law Association in USPTO v. Booking.com
2020 Diversity and Inclusion Roundtable
2019 Writing Competition Winner - Synopsis of "Hazards in Obviousness-Type Double Patenting"
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Creating Stronger Chemical Patents to Capture the Investment in Innovation: Best Practices
Message from the Editor-in-Chief
New Report on Underrepresented Groups in Patenting
Making Connections Event Summary
What makes Massachusetts small but mighty?
2019 Annual Meeting
The Case Law Club Kicks Off 2020 with Arthrex v. Smith & Nephew
Officers and Board of Governors
Job listings
Community Calendar
Legislative Meeting Summary
Spring IP Symposium
David Gooder Appointed USPTO Commissioner for Trademarks
This term, the Supreme Court is hearing several important copyright and trademark cases. One of the hot cases in trademark circles is United States Patent and Trademark Office v. Booking.com B.V., No. 19-46 (US 2020). The BPLA, via the Amicus and Trademarks and Unfair Competition Committees, submitted an amicus brief supporting Booking.com. You can find the BPLA’s brief here. In Booking.com, the USPTO refused to register the mark “Booking.com” as generic. On appeal to the district court, Booking.com submitted survey evidence showing that consumers regarded the mark as a source identifier (i.e., a functioning trademark) rather than as a generic term, and the district court reversed the USPTO. The Court of Appeals for the 4th Circuit affirmed. In the Supreme Court, the USPTO and its amici argued that adding a generic top level domain identifier like “.com” to a generic term like “Booking” does not convert a generic term to a proper trademark. The BPLA argued that the USPTO was asking the wrong question. The question is not whether adding one generic term to another can ever create a non-generic mark. Rather, the correct question is what is the commercial impression of the mark as a whole. The BPLA further argued that the USPTO cannot ignore survey evidence on the commercial impression that the mark as a whole makes on consumers. Erik Belt, Lori Shyavitz, Susan Goldsmith, Anne Shannon, and Alex Ried, all of McCarter & English, LLP, wrote the brief.