Cannata, Misiti and Smirti File Amicus Brief with U.S. Supreme Court

On February 19, Mike Cannata, Frank Misiti, and Steve Smirti filed an amicus brief with the U.S. Supreme Court as counsel of record for the New York Intellectual Property Law Association in the United States Patent and Trademark Office v. Booking.com B.V. matter.  This case addresses whether the addition, by an online business, of “.com” to an otherwise generic term can create a protectable trademark.

The case is before the U.S. Supreme Court as a result of a decision by the United States Court of Appeals for the Fourth Circuit which concluded that BOOKING.COM was a protectable trademark.  In its decision, the Fourth Circuit determined that the United States Patent and Trademark Office (“USPTO”) failed to satisfy its burden of proving that consumers understood BOOKING.COM to refer to general online hotel registration services and not to Booking.com.  Additionally, the Fourth Circuit endorsed the use of survey evidence by Booking.com and rejected the USPTO’s arguments that survey evidence was not appropriate in this instance to assess genericness.

The amicus brief advanced the argument that consumer survey evidence is relevant, and helpful, in evaluating the public’s understanding of whether a term is generic – – a key issue in determining whether a term can receive federal trademark protection.

This is the third amicus brief filed in the U.S. Supreme Court where Rivkin Radler LLP is counsel of record.