This week’s US Supreme Court decision that Booking.com is not generic might lead to a larger use of consumer surveys. 

Alan Behr, partner at law firm Phillips Nizer in New York City, points out that in the oral arguments the attorney for Booking.com said marks like the brand are relatively weak. Weak marks in the fashion industry aren’t a good idea, Behr says.

He notes that someone could theoretically register a domain name like menssocks.com and have a basis for protection. But he says this would still be a weak basis because someone else could register menssocks.info.

“Then you get into a lawsuit involving survey evidence and experts about whether that’s confusingly similar or not.”

Because of this, companies in fashion should be wary of picking a generic name, even if a marketing person really loves it, Behr says.

“When in doubt in fashion, go for a strong mark. It will pay itself back many times over in benefits. The fact that the court had concurring and dissenting opinions shows that when you have a mark that’s just over the line, like Booking.com, you’re going to have questions.”

Most brand owners would undoubtedly prefer not to have to argue in front of the Supreme Court to get a trademark registration in the first place. But those that do have to fight for their marks would be wise to take advantage of any evidence, including consumer surveys, that’s available to them.

“Interestingly, the owner of the mark BOOKING.COM admitted in oral argument before the court that it is a ‘weak mark,’ but  the court found it to be a mark just the same.  In my experience, marketers are rarely daunted by legal evaluations of the relative strength of marks. If a marketer loves a mark, whether it is as strong as titanium or as weak as tissue paper, he or she will usually go for it and let the law follow along as best it knows how. In this case, the law did just that.

What the case likely means is that there can be no automatic rejection of an application to register a mark that is simply a combination of a generic term such as ‘booking’ and a familiar top-level domain extension such as ‘.com.’  It does not, however, mean that any such combination would necessarily be registered as a trademark.  That is, you cannot take any generic term and add “.com” to it and say you definitely have a registrable mark for any goods or services.  Each case would still need to be examined on its own merits.  The Supreme Court noted, for example, that ART.COM is already registered as a trademark but did not make a new rule that all such combinations are automatically registrable.  What the case signifies is that, in the Internet age, top-level domain extensions, when added to generic terms might well create registrable marks.  And that is news—an important clarification from the Supreme Court of how old law applies to the new tricks of electronic commerce.”

“You cannot take any generic term and add ‘.com’ to it and say you definitely have a registrable mark”

What the case likely means is that there can be no automatic rejection of an application to register a mark that is simply a combination of a generic term such as ‘booking’ and a familiar TLD extension such as ‘.com’. It does not, however, mean that any such combination would necessarily be registered as a trademark. That is, you cannot take any generic term and add ‘.com’ to it and say you definitely have a registrable mark for any goods or services. Each case would still need to be examined on its own merits. The Supreme Court noted, for example, that ART.COM is already registered as a trademark but did not make a new rule that all such combinations are automatically registrable. What the case signifies is that, in the internet age, TLD extensions, when added to generic terms might well create registrable marks. And that is news – an important clarification from the Supreme Court of how old law applies to the new tricks of electronic commerce.

“Either they don’t have experienced people working on it, or they don’t care,” McCabe said. “It’d be interesting to see how often the provisions have been deployed. I’m betting not a lot, but I’m also betting PROs are getting more and more pressure from big artists” to enforce them, she said.

In May 2020, the Securities and Exchange Commission (“SEC”) adopted major changes (the “Amendments”) to its rules and forms relating to the historical and pro forma financial statements and information that must be provided by public companies in connection with business acquisitions and dispositions. 
 
The Amendments are effective on January 1, 2021. Voluntary early compliance with the Amendments is permitted in advance of the mandatory compliance date provided that the Amendments are applied in their entirety from the date of early compliance.

Higher EPLI rates are possible, but not in places such as New York State and New York City where these individuals were already protected, said Regina E. Faul, New York-based partner who chairs Philip Nizer LLP’s employment & labor practice.

Now, more than ever, dating relationships are formed by electronic communications.  A new dating “app” appears every other day and there are seemingly infinite amounts of online dating websites.  In the current climate, with the national stay-at-home directives caused by the Coronavirus Crisis, people are even more reliant on technology and electronic communications to form dating relationships.   Unfortunately, while methods of communication may have changed, domestic violence has not.  This is the Fourth Article in our continuing series of Family Law Issues and the Coronavirus Crisis. 

Marc Landis Landis chats with Law360 about how the firm has evolved since its inception, its operation during the coronavirus pandemic and his goals for the firm's future.

Major changes to SEC Disclosure Rules For Mining Companies Will Become Mandatory in 2021.  In October 2018, the Securities and Exchange SEC (“SEC”) adopted major changes (the “New Mining Disclosure Rules”) to the SEC’s disclosure regulations for public mining companies.  Registrants have been permitted to comply with the New Mining Disclosure Rules on a voluntary basis since 2019, but they will become mandatory for fiscal years beginning on or after January 21, 2021.  For mining company registrants that have not already begun to comply with the New Mining Disclosure Rules on a voluntary basis, it is not too early to become familiar with the new Rules.
 

As the firms are plotting their future, Marc Landis, managing partner of roughly 70-lawyer Phillips Nizer LLP, wanted to remind the firm leaders that succession planning is not a "one-time exercise."

The New York-based firm, which was founded in 1926 by attorneys Louis Phillips and Louis Nizer, has already gone through several generations of leaders, Landis said.

"Succession planning, particularly in the law firm setting, is very much an art rather than a science," Landis said.  "The relationships among attorneys at a firm, relationships between attorneys and clients, are all very personal and very specific nad need to be treated as such."

Landis said a law firm is not like an automobile factory where if all the workers left one day, the new employees would be immediately able to pick up the work by using the same machines and making the same cars. 

"The attorneys' relationships with their clients are based on the clients having confidence in their knowledge, their brainpower, their judgment and a willingness to really understand the client's needs," he added. 

In these critical weeks, you may have questions or wish to change or develop your estate plan and documents.  We are working remotely and remain available to serve you, whether you are an existing client or wish to become a new client.  This event has caused uncertainty over many procedural issues and brings new changes every day, but we actively monitor these changes and adapt as needed.

 

A Message From Our Managing Partner, Marc Landis

One of the biggest cases of 2019 was one nobody expected: the March indictment of dozens of parents and university coaches for their parts in a national scheme to trick colleges into admitting students on false pretenses.

 

See Press Release:  Phillips Nizer launches College and University Integrity Initiative: Ilene Jaroslaw and Bradley Simon, two veteran federal prosecutors, to assist universities and administrators in confronting and resolving admissions investigation issues (March 20, 2019)