On June 8, 2023, the Supreme Court issued its unanimous opinion in Jack Daniel’s Properties, Inc. v. VIP Products LLC, 599 U.S. ___ (2023), vacating the Ninth Circuit’s judgment in the case. In the Court’s view, the Ninth Circuit misunderstood the Second Circuit’s decision in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989) (Newman, […]

Daniels v. Walt Disney Co., 958 F.3d 767 (9th Cir. 2020), cert. denied, 592 U.S. __ (2021) (No. 20-132) On January 11, 2021, the Supreme Court denied certiorari in The Moodsters Company v. The Walt Disney Co., No. 20-132. In doing so, the Court declined for now to involve itself in a recurring and difficult […]

Last month the USPTO issued Examination Guide 3-20 entitled “Generic.com Terms after USPTO v. Booking.com” (“Guide”), setting forth guidance for evaluating applications seeking to register marks containing generic.com terms. The guidance follows the Supreme Court’s recent ruling in USPTO v. Booking.Com B.V., 140 S. Ct. 2298, 2020 U.S.P.Q.2d 10729 (2020) (“Booking.Com B.V.”), in which the […]

Google LLC v. Oracle America, Inc., No. 18-956, Supreme Court of the United States On October 7, 2020, the Supreme Court will hear argument in a case with potential to resolve two far-reaching questions about the application of copyright law to the packages of computer code known as application programming interface (“API”). Google has described […]

On June 30, 2020, the Supreme Court issued its decision in United States Patent and Trademark Office v. Booking.Com B.V., 591 U.S. ___, 140 S. Ct. 2298 (2020), a litigation reviewed in these posts on March 12, 2020. Our review asked this question: “When a generic, second-level domain and a top-level domain are combined, is […]

Matal v. Tam, 582 U.S. ___, 137 S. Ct. 1744 (2017)  In 2017, the Supreme Court invalidated the Lanham Act’s prohibition on the registration of “disparag[ing]” trademarks because the ban enabled the USPTO to engage in viewpoint discrimination in violation of the First Amendment. Matal v. Tam, 137 S. Ct. 1744 (2017). Two years later, […]

Booking.com B.V. v. United States Patent and Trademark Office, 915 F.3d 171 (4th Cir. 2019), cert. granted, 2019 WL 5850636 (Nov. 8, 2019) Since at least 2006, Booking.com B.V. (“Booking”), a Dutch company, has operated a website where its customers can book travel and hotel accommodations. In 2011 and 2012, Booking filed four trademark applications […]

Dorpan, S.L. v. Hotel Meliá, Inc., 851 F.Supp.2d 398 (D.P.R. 2012), vacated, 728 F.3d 55 (1st Cir. 2013). For more than a century at the time of the litigation, Hotel Meliá, Inc. (“HMI”), a family business, operated a single hotel called “the Hotel Meliá” at 75 Cristina Street in Ponce, Puerto Rico. Despite its long […]