Trademarks in the 2020 IP Law Year in ReviewJanuary 21, 2021
2020 was a year like no other, so you’d be forgiven if the year’s biggest headlines in trademark law didn’t quite catch your attention. In 2020, the US Supreme Court shaped trademark jurisprudence through a trio of notable decisions. A pandemic and shelter-in-place orders pushed more consumers to virtual marketplaces, forcing brand owners, and the courts, to take a renewed look at counterfeiting and online enforcement. The United States Patent and Trademark Office (USPTO) has continued its strict registrability and failure-to-function assessments, and new legislation, rules and fees were directed at cracking down on fraudulent trademark applications and clearing dead weight from the USPTO register to make room for new and growing brands. A COVID-19 stimulus package just so happened to establish the standard for obtaining injunctive relief in litigation under the Lanham Act. And the year saw industry-specific developments with the potential for broader application in the field. This report provides a summary of 2020’s notable moments in trademark law with insights and outlooks for brand owners and practitioners moving into the year ahead.
SCOTUS ON TRADEMARKS
Trademark law was a popular topic at the Supreme Court in 2020. The Court issued three important decisions on topics affecting trademark infringement litigation and the registrability of certain marks.
GENERIC.COM TERMS ARE NOT INELIGIBLE FOR REGISTRATION
Eleanor B. Atkins
In June 2020, the Supreme Court issued its decision in the much-anticipated case addressing the registrability of so-called “generic.com terms” (a generic word followed by a generic top-level domain, such as .com). US Patent and Trademark Office et al. v. Booking.com BV, 591 US ___ (2020). Rejecting a per se rule that generic.com terms are necessarily generic, and therefore incapable of serving as a trademark and ineligible for registration, the Supreme Court (in an 8-1 vote) held that the proper test turns on consumer perception: “Because ‘Booking.com’ is not a generic name to consumers, it is not generic.”
Following the Booking.com decision, the USPTO issued Examination Guide No. 3-20 to provide additional information regarding the examination and registrability of generic.com terms. Applicants seeking to register these marks should be prepared to present a significant amount of evidence demonstrating that consumers recognize the mark as a source identifier. The USPTO advised that reliance on five years’ use or a prior registration alone was unlikely to be sufficient. As the Supreme Court warned, “given the nature of these terms, the available evidence will likely support a conclusion that they are, at least, highly descriptive, and thus consumers would be less likely to believe that they indicate source in any party. Thus, for…