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Developments in Intellectual Property Law

What to Do Before You File a Patent Application

The First of Four Articles on the Patent Process

Fritz Klantschi

This is the first of four articles covering in general terms the process to secure patent rights both domestically and in foreign countries.  This first article discusses the preliminary phase of the process, before the patent application is filed. Each of the areas discussed is a brief overview of an aspect of the patent process.  If you and your management team wish clarification or elaboration on any of the topics, please contact our office at your convenience.  We welcome an opportunity to discuss the patent process and answer any questions you may have.

A company’s intellectual property (IP) program should parallel the company’s product development cycle.  At various stages of the product development process, various IP activities are suggested.  Early in the process, the IP activities are designed for information gathering and decision-making.

The following paragraphs highlight various types of searches and analyses that may be conducted prior to starting the formal process of drafting a patent application.  The described searches/analyses are not the only types available.  Rather, they are some of the more frequent searches/analyses conducted.  Results from these searches/analyses give a company necessary information to make decisions on proceeding with development and/or seeking patent protection for their product.   Not all companies, however, conduct all of these searches/analyses.

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Court Finds BOOKING.COM Not Generic and Entitled to Trademark Registration

Suzanna M. M. Morales

A recent federal court decision that clears the way for federal trademark registration of the mark BOOKING.COM may signal a departure from current practice for the registration of marks made up of generic terms in domain names.

On August 9, 2017, the U.S. District Court for the Eastern District of Virginia reversed a decision of the U.S. Patent and Trademark Office’s (USPTO) Trademark Trial and Appeal Board, holding that the company B.V. was entitled to registration of its BOOKING.COM mark for various travel reservation and related services, even though the terms “booking” and “.com” by themselves are generic for the services. Further, the court found that the combination of a generic word and a top-level domain “generally has source identifying significance,” a departure from the conventional guidance of the USPTO.

The BOOKING.COM Applications

The USPTO had refused registration to four applications for BOOKING.COM in standard characters (word only) and various stylized forms on the basis that the marks were generic for the services.

Generic terms (i.e., the name of the goods or services) are not eligible for registration because such terms are not capable of identifying the source of the goods or services. Allowing registration of these marks could prevent others from using a common term for the goods. Terms that describe some characteristic of the goods or services are only capable of registration if they have “acquired distinctiveness,” which means that the term has taken on a meaning in the public view so that people see the term as a trademark or service mark identifying the goods or services rather than simply describing the goods or services.

After the applications were refused, appealed the refusal of registration to the USPTO’s Trademark Trial and Appeal Board (TTAB), which hears challenges to the decisions of the USPTO’s examining attorneys on pending applications. The TTAB upheld the refusals to register, finding that the addition of “.com” to “booking” did not negate the generic character of “booking” for travel reservations.

Options for Challenging Refusal of an Application

The losing party in a TTAB challenge has two options: 1) appealing the refusal to the Federal Circuit Court of Appeals, a federal appeals court that hears intellectual property matters or 2) filing a new complaint in a federal district court. In this case, filed a new action in the Eastern District of Virginia, which had important implications for the evidence it was able to present to the court.

When a trademark applicant appeals to the Federal Circuit, the court considers the application on the record that was presented to the TTAB, using the standard of whether the decision of the TTAB to refuse registration was supported by substantial evidence. On the other hand, parties to a new case filed in federal district court can submit new evidence, and the court makes its determination de novo, that is, without regard to the TTAB’s factual findings and decisions. Though the option of proceeding de novo before the district may seem attractive because of the ability to present new evidence, due to a recent change in law, the USPTO may be entitled to reimbursement of its expenses, which may include attorneys’ fees, from the party bringing the action, regardless of the outcome of the case. (The parties in the BOOKING.COM case currently are briefing the USPTO’s request for reimbursement.)

The Decision – BOOKING.COM Is Not Generic

The issue to be decided was whether the combination of “booking” with the top-level domain (TLD) “.com” was generic – and not entitled to registration – or descriptive – and entitled to registration with a showing of acquired distinctiveness.

The court first found that the term “booking” is generic for the services in’s application. This could have been the end of the story if the case was before the Federal Circuit, where a number of cases have held that the addition of a top-level domain (TLD) like .com to a generic term creates a term that is still generic. But the Eastern District of Virginia, using the less deferential standard of de novo review, distinguished prior Federal Circuit cases that had considered similar facts.

The court, noting that the public perception of domain names has changed since the first Federal Circuit case on the issue in 2004, found that a domain name is by its nature unique. Rather than considering whether “booking” alone is the type of service provides, the court focused on whether “” is the class of service.

Notably, the court found‘s survey on consumer impressions of the mark, which indicated that consumers believed the mark to be a brand name, to be persuasive. The survey was among the new evidence the company submitted, which would not have been permitted in an appeal to the Federal Circuit.

Having found that is not generic for the company’s services, the court then went on to hold that the mark had acquired the source-identifying distinctiveness for hotel reservation services necessary for registration of a descriptive mark, but not for travel agency services. The court found acquired distinctiveness based on the extensive evidence of the company’s advertising and sales. (Two of the applications at issue, which contained design and color elements in addition to the wording, were sent back to the USPTO for review of whether these additional elements were eligible for protection.)

The Future for Domain Names?

Although the case marks a departure from the conventional wisdom about trademark registration, it is important to note that may still have relatively limited protection for its mark. The court emphasized that it was not giving a monopoly on the term “booking,” and even with a federal trademark registration could not prevent others from using domain names that included “” along with other words. Still, the ability to federally register the mark provides important evidentiary presumptions for enforcement purposes.

The decision also highlights the potential implications to a trademark applicant of deciding whether to appeal a refusal of registration to the Federal Circuit or file a new case in a district court as did here.

Whether this decision will change trademark practice remains to be seen. The USPTO apparently maintains its position that adding a TLD to a generic word generally is not sufficient to create a mark capable of registration, and the USPTO may appeal this decision. This will continue to be an issue to watch.

Three Types of Intellectual Property Protection for Tangible Objects – Trade Dress, Copyright, and Design Patent

Suzanna M. M. Morales

A couple of recent court decisions have brought attention to the manner in which the design features of a tangible object can be protected under U.S. intellectual property law.

The Supreme Court, in Star-Athletica, L.L.C. v. Varsity Brands, Inc. held in March that the design on a cheerleading uniform can be eligible for protection under U.S. copyright law.  Previous precedent made it difficult to obtain copyright protection in fashion because clothing is considered a “useful article” not valid for protection.

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Powley & Gibson Wins Favorable Summary Judgment Decision for Client Energy Intelligence Group

On January 24, 2017, Powley & Gibson, P.C. defeated a summary judgment motion brought by Kayne Anderson (“Kayne”) alleging that EIG is entitled to only one award of statutory damages per compiled annual volume of EIG’s publication and a partial summary judgment motion alleging that the statute of limitations limits EIG’s damages to infringement occurring three years prior to the filing of the complaint, while at the same time prevailing on summary judgment against all of Kayne’s affirmative defenses.

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Abandoning Your Trademark Rights, and What You Can Do to Avoid It

Suzanna M. M. Morales

On January 17, 2017, Feld Entertainment, the parent company of Ringling Bros. and Barnum & Bailey, announced that it is closing down the circus. According to a press release, the last performance of the Ringling Bros. circus will be May 7, 2017. Feld will continue to offer other shows such as Disney on Ice and Marvel Universe LIVE!.

Since its inception in 1871 under a different name, the Ringling Bros. and Barnum & Bailey Circus built up a valuable brand. Generations of circus goers (this author included) cherish childhood memories of lion tamers, tightrope walkers, and other death-defying feats, all orchestrated by a ringmaster in a top-hat and tails. Read More