Timothy J. Kelly participates in the IR Global Jurisdictional Guide to Trademark & Copyright


Intellectual property and the challenges of globalisation 

When the US Supreme Court recently ruled that Booking.com could trademark its domain name, the decision was a game changer for online businesses the world over.

The court decided by an 8-1 ruling that adding a “.com” combination to a generic word is no longer restricted under US trademark law. The US Patent and Trademark Office had initially denied the registration by Booking.com, arguing generic names were ineligible for trademark protection. However, this was overturned by the court which stressed consumers did not view booking.com as a generic term but as a brand offering online hotel reservations. Following the ruling, Booking.com said the decision was a good example of how the legal system can evolve to reflect the complexities of the digital age, heralding the successful conclusion of the case as a victory for any brand owner who has invested to build a global, digital brand.

Although the ruling will have a huge impact on trademarks far beyond the borders of the US, global intellectual property legislation remains a patchwork of interlinked bilateral and multilateral agreements that work in tandem with national laws in different jurisdictions.

Do you see any emerging trends or potential upcoming developments in your country’s trademark law?

There have been some interesting recent developments in US trademark law that are likely to impact decisions being made by clients and their counsel with respect to maximizing trademark protection in the US moving forward. Most recently, the US Supreme Court ruled that arguably generic terms could function and be registered as trademarks when combined with generic top-level domain names (gTLDs), provided that the “generic term + gTLD” mark actually functions as a source identifier. The Supreme Court’s opinion was grounded in general trademark principals, and explained that where a term has been elevated in the minds of consumers so as to function and be understood as a unique source-identifier, then the term is registrable, notwithstanding the fact that the term is comprised of what may otherwise be “generic” terms. While this ruling may seem immediately appealing to entities utilizing what may be considered generic terms in connection with their product or service offerings, the level of general understanding necessary to elevate an otherwise generic term to trademark “status” may ultimately prove difficult for many brand owners to achieve. Nonetheless, in securing their brand assets, clients will now want to consider filing trademark applications for names that may previously have been considered too generic to be protectable. 

From the trademark prosecution perspective, the US Trademark Office has recently begun examining, with heightened scrutiny, specimens submitted in support of a trademark owner’s alleged use of the mark in the US. As a result of a perceived increase in specimens “created” merely for the purpose of satisfying the requirement that a mark be used in US commerce, examiners at the US Trademark Office are frequently questioning specimens and conducting their own investigations when evaluating specimen submissions.

In your jurisdiction, what options are available to a trademark holder when applying rights or enforcement rights? What protection is there for unregistered names and/or brands?

In the US, trademark rights are based on use of the mark in US commerce. Trademarks are primarily protected by way of registration with the US Trademark Office and/or under the common law and are most frequently enforced at the US Trademark Office or through the Federal courts. Enforcement of trademark rights, whether based on registration or common law, requires that the trademark owner establish rights in the mark and that the use of the accused mark is such that it will likely cause confusion as to the source, original, or sponsorship of the accused product / service. If the asserted trademark is registered, protectability is presumed; if not, the party asserting trademark rights must establish that the mark has come to act as a source-identifier in the minds of consumers as a result of the owner’s use, advertising, and promotion of the products / services offered under the mark. Importantly, while it is possible, in certain situations (such as a US trademark application based on registration in a foreign country), to obtain a US trademark registration without actually using the mark in US commerce, enforcing that registration can often prove challenging because without use of the mark in US commerce, it can be difficult establishing the requisite likelihood of consumer confusion resulting from the accused party’s unauthorized use.

How is global innovation and digitalization shaping the advice you give your clients and what should they be aware of?

Clearly global innovation and digitalization are important aspects to be considered as part of any brand protection strategy both from offensive and defensive perspectives. Offensively, the protection of band assets in the digital world should be part of the client’s focus as the initial brand protection steps are being implemented. For example, ensuring that consideration is given to clearing and filing trademark applications for names and logos as used on the internet and in connection with apps offered through online marketplaces such as the Apple Store and Google Play. Similarly, negotiating and drafting appropriate licenses and related agreements helps to ensure that developers, content contributors, and manufacturers are not in a position to make inappropriate use of content and/or to divert product in violation of the client’s rights. 

Defensively, policing online marketplaces for infringing content and promptly sending cease and desist letters or, as appropriate, filing take-down requests using established protocols are important steps for ensuring that brand assets remain source-identifiers and for preventing consumer confusion

Global innovation is more and more frequently resulting in product development, manufacturing, and sales originating in multiple countries around the world, thereby requiring that trademark protection and enforcement efforts be multi-jurisdictional in nature. Coordinating the filing of trademark applications in countries around the world is important, not only for where products are to be distributed and sold, but also where they will be manufactured. The resources of IR Global together with my firm’s long-term contacts with trusted counsel around the world enables us to facilitate protection and enforcement strategies that address the unique challenges clients are facing as a result of global innovation and digitalization.