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Supreme Court Issues Two Lanham Act Decisions

Romag Fasteners, Inc. v. Fossil Group, Inc.,

140 S. Ct. 1492 (April 23, 2020).

The US Supreme Court resolved a circuit split and held that willful infringement is not a precondition to obtaining an award of profits from an infringing defendant in a case brought under the Lanham Act.

The defendant, Fossil, had avoided an award of profits through appli- cation of Second Circuit precedent, holding that profits could not be awarded without a finding of willfulness. The jury found Fossil’s failure to guard against its suppliers’ use of counterfeit versions of the plaintiff’s, fasteners in the manufacture of Fossil handbags was callous but not willful. The US Courts of Appeals for the First, Eighth, Ninth, Tenth and DC Circuits previously had imposed similar require- ments. The remaining circuits had not held willfulness to be a required element of a claim for disgorgement of profits.

The Supreme Court did not hold that an infringing defendant’s mental state is irrelevant for purposes of determining what relief should be awarded — it remains a “highly important consideration.” The Supreme Court simply rejected the categorical rule some circuits had applied that a finding of willful infringement must precede an award of disgorgement of profits. Fossil now must make its arguments against an award of profits in the district court in light of the US Supreme Court’s decision, and it remains to be seen how any evidence of Fossil’s mental state will factor into any such award.

USPTO v. Booking.com, B.V., — S. Ct. —, No. 19-46 (June 30, 2020).

The US Supreme Court held that the proposed service mark “Booking.com” is not ineligible for federal trademark registration on grounds of “genericness.” Booking.com, which runs the travel-booking website of the same name, applied to register Booking.com as its trademark. The US Patent and Trademark Office (USPTO) refused registration, finding the term to be generic because it was comprised of a generic term (“booking”) followed by a generic top-level domain (“.com”); or, in the alternative, that the term is merely descriptive and lacking in secondary meaning.

Booking.com sought review in a US district court, a procedural move, which allowed it to introduce new evidence of consumer perception of Booking.com as denoting a specific service offering. The district court held the mark was descriptive — not generic — and that Booking.com had met the distinctiveness requirement for registration. The USPTO appealed the determination that the mark is not generic. The US Court of Appeals for the Fourth Circuit affirmed the district court’s ruling, as did the US Supreme Court.

The Supreme Court thus rejected a nearly per se rule urged by the USPTO that a generic term combined with a generic top-level domain necessarily constitutes a generic composite mark. The Supreme Court did not create a new rule. It affirmed existing rules: a trademark must be considered as a whole, and consumer perception matters.

©2020 Katten Muchin Rosenman LLPNational Law Review, Volume X, Number 218

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About this Author

Jeffrey A. Wakolbinger, Katten Muchin, false advertising lawyer, trade secrets attorney
Associate

Jeffrey A. Wakolbinger concentrates his practice on matters involving trademarks, copyrights, unfair competition, false advertising and trade secrets.

Jeff has represented the owners of many well-known brands in litigation and appeals in federal court and before the Trademark Trial and Appeal Board, where he has enforced and defended trademarks used in the technology, entertainment, fashion, telecommunications, automotive, food, pharmaceutical, oil-and-gas and other industries. Jeff also has defended media, fashion, hospitality and...

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