The “Ebonys” is a 70s soul group, which helped create the “Philadelphia Sound,” incorporating elements of soul, funk, disco. The group was founded in 1968 by David Beasley (“Beasley”) and other members. William Howard joined the band in the 1990s, but departed after a few years.
In 2012, Howard registered “THE EBONYS,” as a federal trademark registration with the PTO (the “ ‘469 mark”), which prompted Beasley to ask the Trademark Trial and Appeal Board (the “TTAB”) to cancel the registration (the “ ‘469 mark”). However, the TTAB dismissed Beasley’s 2013 and 2017 petitions.
Unsatisfied with the outcomes of the TTAB proceedings, Beasley sued for trademark infringement in federal court in 2019. The District Court granted Howard’s motion to dismiss Beasley’s Complaint on the grounds of claim preclusion. The District Court reasoned that claim preclusion barred Beasley from asserting the claim because it turned on “facts and legal theories [that] were all actually litigated in” the 2017 petition, and Beasley could have raised any priority of use arguments in his 2013 petition. The trial judge further concluded that claim preclusion applied even though Beasley sought a damages remedy that he did not pursue at the TTAB.
Beasley then appealed the trial court’s decision to the Third Circuit Court of Appeals. The central issue of this appeal was whether Beasley’s prior losses in cancellation proceedings before the TTAB precluded Beasley’s Section 43(a) claim (pertaining to damages for trademark infringement) before the District Court. The Court of Appeals held that they do not. Specifically, the appellate court stated that “a limit to claim preclusion applies to cases, like this one, where a plaintiff seeks damages or an injunction in a section 43(a) infringement action after pursuing a cancellation claim before the TTAB.”
The Appeals Court held that the TTAB is “not a general-purpose tribunal for trademark disputes. Instead, it has limited jurisdiction ‘to determine only the right to register’ a trademark and cannot ‘decide broader questions of infringement or unfair competition.’ ” (citations omitted) (emphasis added) “[T]he TTAB’s jurisdiction is narrow,” while the “statutory provision [Section 43(a) infringement action] under which Beasley sues is broad.” (emphasis added).
The Court wrote that “[b]ecause the TTAB has no jurisdiction to consider whether an infringer’s use of a mark damages a petitioner seeking cancellation, and in turn cannot award any remedy beyond cancellation for the injuries a petitioner has suffered. . . a Section 43(a) claim is not one that could have been brought in a TTAB cancellation proceeding.” (emphasis added).
This decision from the Third Circuit provides some comfort and reassurance to litigants that they can bring their claims before the TTAB without fear of waiving their rights to bring any future trademark infringement actions in federal courts, including actions that seek monetary and injunctive relief, which are not available in the TTAB.
On a related note, this Third Circuit decision joined the rulings of the Ninth and Second Circuit, which held that that preclusion is tightly limited to only those issues actually decided on the merits in the TTAB and for which the TTAB has jurisdiction to decide.
About the author: Violaine Brunet is an associate in Gordon Rees Scully Mansukhani’s Intellectual Property Practice Group. Her practice focuses on litigation matters involving copyright, trademarks, and patents. Ms. Brunet also has experience in international law from her work in the Superior Court of Quebec in Quebec City, Canada. Ms. Brunet’s biography can be found here.
In Spiritline Cruises LLC v. Tour Mgmt. Serv’s, Inc., Oppo. No. 91224000, the TTAB held that use of the Internet Archive tool, known as the “Wayback Machine,” for evidentiary purposes was permitted. In making this determination, the Board addressed hearsay and authentication issues, and held: (1) the evidence fell within the business record hearsay exception; and (2) the affidavit submitted by Spiritline served as an appropriate means to authenticate the Wayback Machine printouts.
Background
Spiritline Cruises LLC (“Spirtline”) opposed the registration of the mark “CHARLESTON HARBOR TOURS,” owned by Tour Management Services, Inc. (“TMS”) for travel tours and boat charter related services. In its Notice of Opposition, Spiritline claimed that the “CHARLESTON HARBOR TOURS” mark is incapable of registration because it is geographically descriptive and has been used in its descriptive manner by many parties, in addition to Spritline, in the marketplace. In response, TMS claimed it made substantially exclusive use of the “CHARLESTON HARBOR TOURS” mark for at least five years prior to filing its application for registration and that the evidence submitted by Spiritline were largely recent uses in order to attempt to block registration of TMS’s application.
To support its claims, Spiritline submitted various printouts utilizing the Wayback Machine to illustrate third-party use of the “CHARLESTON HARBOR TOURS” mark between 2004 and 2015. The purpose of introducing this evidence was to discount TMS’s claim of substantial exclusive use of the “CHARLESTON HARBOR TOURS” mark. The evidence submitted by Spiritline was further accompanied by an affidavit instructing the Board of what the printouts were, how they were acquired, and the relevant dates associated therewith. The specificity provided by Spiritline’s affiant regarding the Internet crawling and archiving process was heavily regarded by the Board and served as a means to obviate authentication issues. Not surprisingly, TMS objected to the introduction of the Wayback Machine evidence claiming it was hearsay; however, the Board overruled and held that the evidence and supporting affidavit qualified under the business record exception. The Board further held that the evidence was properly authenticated and a proper foundation was laid via an affidavit to support the intended evidentiary use. As a result, the Board allowed numerous Internet printouts in to evidence to illustrate not only what they showed on their face, but to establish that TMS did not exercise substantially exclusive control over the “CHARLESTON HARBOR TOURS” mark. In fact, the evidence made it clear that the “CHARLESTON HARBOR TOURS” mark was frequently used on a number of third-party websites without challenge. Ultimately, after review and consideration of the various arguments and evidence submitted throughout the duration of the proceeding, the Board held TMS’s application for “CHARLESTON HARBOR TOURS” should be refused from registration.
The use of the Wayback Machine in this case is important because it provides specific instructions for properly authenticating and admitting such evidence in a TTAB action. As seen in this matter, the Wayback Machine evidence played a paramount role in establishing third party use of the “CHARLESTON HARBOR TOURS” mark. This tool can likewise be used to provide support on issues related to priority of use, abandonment, no bona fide use of the mark at the time of filing an in-use application, fraud, and issues related to a mark becoming generic. This TTAB ruling is instructive on avoiding potential hearsay and authentication related issues when using records from the Wayback Machine.
About the author: Gregory Brescia is a registered patent attorney and a Partner in Gordon Rees Scully Mansukhani’s Intellectual Property Practice Group. His practice focuses on intellectual property prosecution and litigation. He also counsels clients on intellectual property enforcement and corporate transactions involving formation, compliance, and licensing. Mr. Brescia’s biography can be found here.
A generic term combined with a non-source-identifying term is just a generic term, right? In United States Patent and Trademark Office v. Booking.com B.V., Case No. 19-46, 2020 U.S. LEXIS 3517, 591 U.S. ___ (June 30, 2020), the U.S. Supreme Court rejected a sweeping rule that the combination of a generic word with “.com” is automatically generic and, therefore, unregistrable per se.
Procedural History
Booking.com, a digital travel company that provides travel-related services under the brand “Booking.com,” filed applications to register the mark “Booking.com.” A USPTO examining attorney and the Trademark Trial and Appeal Board (“TTAB”) concluded that the term “Booking.com” was generic for the services offered and denied registration. According to the Trademark Manual of Examining Procedure (“TMEP”) (Oct. 2018), “[portions of the uniform resource locator (‘URL’), including the beginning, (‘http://www.’) and the top-level Internet domain name (“TLD”) (e.g., “.com,” “.org,” “.edu,”) indicate an address on the World Wide Web, and therefore generally serve no source-indicating function.” TMEP § 1209.03(m). Because “.com” “generally indicate[s] the type of entity using a given domain name, and therefore serves no source-indicating function, their addition to an otherwise unregistrable mark typically cannot render it registrable.” Id. TTAB found that “booking” was a generic term for “making travel reservations” and “.com” only served to identify a commercial website. It therefore concluded that “Booking.com” is unregistrable because it is generic or, in the alternative, descriptive and lacking secondary meaning.
The U.S. District Court for the Eastern District of Virginia and the U.S. Court of Appeals for the Fourth Circuit disagreed with the PTO. Generic terms are the “common name of a product or service itself.” Sara Lee Corp. v. Kayser-Roth Corp., 81 F.3d 455, 464 (4th Cir. 1996). The District Court, relying on Booking.com’s new evidence of consumer perception, concluded that the compound term “Booking.com,” as opposed to “Booking,” is not generic. Instead, consumer perception evidence indicated that “Booking.com” is descriptive and had acquired secondary meaning as to hotel-reservation services. The USPTO appealed only the District Court’s ruling on genericness. The Fourth Circuit affirmed the District Court’s determination that “Booking.com” is not generic, finding no error in its assessment of consumer perception and rejecting the USPTO’s contention that combining a generic term with “.com” is “necessarily generic.” The Fourth Circuit applied the three-step test for genericness: “(1) identify the class of product or service to which use of the mark is relevant; (2) identify the relevant consuming public; and (3) determine whether the primary significance of the mark to the relevant public is as an indication of the nature of the class of the product or services to which the mark relates, which suggests that it is generic, or an indication of the source or brand, which suggests that it is not generic.” Booking.com B.V. v. United States Patent and Trademark Office, 915 F.3d 171, 180 (4th Cir. 2019) (citing Glover v. Ampak, Inc., 74 F.3d 57, 59 (4th Cir. 1996)).
The Supreme Court’s Ruling Reaffirms the Primary Significance Test for Analyzing Genericness
The Supreme Court affirmed the Fourth Circuit, concluding that “Booking.com” is not generic. The Court held, “[w]hether any given ‘generic.com’ term is generic…depends on whether consumers in fact perceive that term as the name of a class or, instead, as a term capable of distinguishing among members of the class.” 2020 U.S. LEXIS 3517, *16. The Supreme Court’s ruling rejected the USPTO’s assertion of a blanket rule that deemed all “generic.com” terms as generic.
The Booking.com Court’s holding does not materially change the test for genericness as announced in Kellogg Co. v. Nat’l Biscuit Co., 305 U.S. 111, 118, 83 L. Ed. 73, 59 S. Ct. 109 (1938). In Kellogg, the Supreme Court stated that the owner of the mark “must show that the primary significance of the term in the minds of the consuming public is not the product but the producer.” Id. In Booking.com, the Supreme Court held that the owner of the mark must show that “consumers in fact perceive that term…as a term capable of distinguishing among members of the class.” Accordingly, the Booking.com opinion reinforces the primary significance test in determining whether a mark is generic or descriptive in the context of a generic.com term. To do so, the Court necessarily had to reject the USPTO’s position that a generic term combined with a generic corporate designation (in this case “.com”) is basically per se an unregistrable generic term.
In Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., the Court held that “Goodyear Rubber Company” was not “capable of exclusive appropriation.” 128 U.S. 598, 602, 32 L. Ed. 535, 9 S. Ct. 166 (1889). “Goodyear Rubber” was a class of goods and the combination of a generic term with “Company” “only indicates that parties have formed an association or partnership to deal in such goods.” Id. In Booking.com, however, unlike a generic term combined with “company,” a generic term combined with “.com” refers to a specific entity due to the exclusivity of domain name ownership. 2020 U.S. LEXIS 3517, *14. Therefore, “consumers could understand a given ‘generic.com’ term to describe the corresponding website or to identify the website’s proprietor.” Id. *15. The Booking.com Court clarified Goodyear’s principles, in conjunction with the subsequent enactment of the Lanham Act, as “A compound of generic elements is generic if the combination yields no additional meaning to consumers capable of distinguishing the goods or services.” Id. *15-16. However, “[a] ‘generic.com’ term might also convey to consumers a source-identifying characteristic: an association with a particular website.” Booking.com, 2020 U.S. LEXIS 3517, *14. The point is that a court must look at consumer perception to determine whether the combined “generic.com” term identifies a class of goods or a particular producer.
Impact
The decision may increase the cost of trademark prosecution. The ruling seemingly opens the gates for an onslaught of generic.com applications. However, applicants will need to show consumer perception that the generic.com term identifies a brand, not a class of goods. The Booking.com Court provided a non-exhaustive list of support for consumer perception of a term’s meaning, to include: “consumer surveys, but also dictionaries, usage by consumers and competitors, and any other source of evidence bearing on how consumers perceive a term’s meaning.” 2020 U.S. LEXIS 3517, *16 n.6. Compiling such evidence may be costly to trademark applicants seeking to register facially generic terms.
The decision may create a path for federal registration for other combination generic terms and non-source-identifying terms. The Booking.com Court’s holding specifically identifies the factual circumstances for which to apply its rule – when analyzing whether a “generic.com” term is generic. However, the analysis could likely be extended to other generic terms that lack a source-identifying term (such as other TLDs like “.org” or “.net”, or # or HASHTAG).
While a generic.com mark may be registrable (assuming proof of the mark’s primary significance as source to consumers), Booking.com does not alter the tenets of trademark law – likelihood of confusion and fair use. “[E]ven where some consumer confusion exists, the doctrine known as classic fair use, [4 McCarthy] § 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.” 2020 U.S. LEXIS 3517, *18 (citing 15 U.S.C. §1115(b)(4); KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 122-23, 125 S. Ct. 542, 160 L. Ed. 2d 440 (2004)).
However, the decision may ultimately increase the instance of trademark bullying. Even though a generic.com mark is registrable, as the Court explains and Booking.com concedes, the mark is a weak descriptive mark with a more difficult path to showing likelihood of confusion. First, Booking.com concedes that “Booking.com” is a weak mark and as a descriptive mark, it is “harder…to show a likelihood of confusion.” 2020 U.S. LEXIS 3517, *18 (quoting Tr. of Oral Arg. 42-43, 66). Second, Booking.com accepts that close variations of “Booking.com” are unlikely to infringe. Id. And finally, the federal trademark registration of “Booking.com” “would not prevent competitors from using the word ‘booking’ to describe their own services.” Id. However, it is conceivable that a generic.com trademark owner could and would use its federal registration to scare users of the generic term into ceasing use for fear of a costly, protracted legal battle.
About the author: Julia Whitelock is a partner in Gordon Rees Scully Mansukhani’s Intellectual Property and Commercial Litigation Practice Groups. Her practice focuses on litigating matters involving trademarks, copyrights, trade secrets, commercial disputes, and consumer claims, and advertising & e-commerce law.
Today the Gordon & Rees Intellectual Property Practice Group presented a webinar titled “What You Need to Know About Trademarks” that discussed areas of critical importance to businesses regarding trademarks. Topics included the establishment of trademark rights through use; the differences between common law and registered marks; the value in a federal trademark registration; trademark searching before adopting a mark; the proper use of trademark marking; foreign trademark registrations; infringement actions in federal and state court; and appeals, oppositions and cancellation proceedings before the Trademark Trial and Appeal Board. To listen to the webinar, click here.
We will be holding webinars throughout the year on various intellectual property subjects including copyrights and patents. To join us, click here.
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