Booking.com and Implications for Domain-Name Trademarks: Distinctiveness, Consumer Surveys, Functionality
Recording of a 90-minute premium CLE video webinar with Q&A
This CLE course will guide trademark counsel through the Supreme Court's June 30, 2020 decision in Booking.com and its implications on brand management strategy related to domain names containing generic terms, including trademark prosecution and trademark enforcement. The panel will address the potential effectiveness of surveys in assisting the Trademark Office and courts in determining whether a domain name has acquired trademark significance, along with other best practices in preparing a generic domain name for attempted registration or enforcement as a trademark.
- U.S. Patent and Trademark Office v. Booking.com B.V. (U.S. June 30, 2020)
- Implications of Booking.com decision for registration of generic + .com domain-name composite marks
- Implications of Booking.com decision for enforcement of generic + .com domain-name composite marks
- Building a record for registering generic + .com domain-name composite marks
- Other implications of the Booking.com decision
The panel will review these and other key issues:
- What will the Supreme Court's decision mean for registering and enforcing generic + .com domain-name composite marks?
- How should particular evidence regarding a mark's significance be analyzed and weighted?
- What best practices should counsel employ to get trademark protection for generic + .com domain-name composite marks?
Mr. Feldman, Vice Chair of the firm’s Trademark & Brand Management Group, counsels companies, organizations,... | Read More
Mr. Feldman, Vice Chair of the firm’s Trademark & Brand Management Group, counsels companies, organizations, and individuals on the protection of their intellectual property rights. He focuses his practice on establishing effective domestic and international brand management best practices and resolving intellectual property controversies between his clients and third parties, including trademark, copyright, domain-name and right-of-publicity disputes.Close
Eric T. Fingerhut
Office Managing Member
Mr. Fingerhut is the former leader of the firm’s Trademark & Copyright Practice for eight years. Ranked as a... | Read More
Mr. Fingerhut is the former leader of the firm’s Trademark & Copyright Practice for eight years. Ranked as a First Tier trademark lawyer in the World Trademark Review’s “WTR 1000,” he has practiced all aspects of global brand identity and reputation management for more than 25 years. His practice includes trademark, copyright, right of publicity, advertising, marketing, domain name and new media law. Throughout his career Mr. Fingerhut has registered and protected many of the world's best known brand names in the automotive, bicycle, clothing, food, hospitality and technology industries. The crux of Mr. Fingerhut’s practice includes clearance searches and opinions, global filing programs, designing and implementing trademark protection and enforcement programs, and managing global trademark portfolios. His litigation experience includes infringement, dilution, cybersquatting and unfair competition cases in U.S. district and appellate courts, oppositions and cancellations before the United States TTAB and domain name arbitration proceedings.Close
Daniel D. Frohling
Co-Chair, Retail & Consumer Brands
Loeb & Loeb
Mr. Frohling is a leading legal strategist on marketing and corporate communications mechanisms and content. He... | Read More
Mr. Frohling is a leading legal strategist on marketing and corporate communications mechanisms and content. He combines over 25 years of counseling, transactional and litigation experience with a passion for forging creative, strategic solutions that achieve the enterprise’s on-the-street and online goals within its risk profile. Mr. Frohling works with clients in a variety of industries, including retail and consumer brands, real estate, and industrial manufacturing, both domestically and internationally. He fosters, supports and defends all aspects of clients’ marketing and communications efforts, including brand clearance, exploitation and policing; advertising disputes; marketing co-ventures; e-commerce ventures and disputes; corporate responsibility initiatives; ad agency agreements, disputes and terminations; talent deals and terminations; and the protection and exploitation of media content.Close