Trademark Year in Review: Understanding Key 2020 Trademark Decisions and Their Impact On Your Practice

Description

In 2020, the Supreme Court held in U.S. Patent and Trademark Office v. Booking.com B.V. (U.S. 2020) that a trademark or service mark composed of a generic word (Booking) and a generic top-level domain (.com) could qualify for federal registration if consumers view the combination as a unique source identifier of goods or services and not merely a combination of generic terms.

The U.S. Supreme Court addressed the required showing for a disgorgement of a trademark infringer's profits in Romag Fasteners v. Fossil Group (U.S. 2020), resolving a circuit court split and holding that proof of willful infringement is not required before a court can order disgorgement of a trademark infringer's profits.

The Federal Circuit was also busy in 2020, issuing decisions related to the registrability of colors for product packaging in In re Forney Industries Inc. (Fed. Cir. 2020) and addressing the requirements for entitlement to a statutory cause of action in a TTAB proceeding (formerly known as standing) in Australian Therapeutic Supplies Pty. Ltd. v. Naked TM LLC (Fed. Cir. 2020).

In 2020, the TTAB issued more precedential decisions related to ex parte failure-to-function refusals than any other type of ex parte refusal. The failure-to-function decisions addressed commonly-used phrases, gTLDs as marks, and even a motion mark. The TTAB also examined the bona fide intent requirement for Section 66(a) applications in a precedential inter partes decision.

Listen as our authoritative panel of trademark and brand management attorneys examines key decisions from the past year and discusses important trademark prosecution and enforcement trends and strategies.