Posted on 6 May 2020
In its coverage of the Supreme Court hearing in USPTO v. Booking.com, a case about the genericness doctrine in the context of a domain name, World Trademark Review quoted Peter Sloane as follows: “It was interesting to note how Justice Gorsuch and Booking.com’s attorney invoked the fair use defence as a means to assuage any concern about the monopolisation of generic terms. Specifically, Booking.com’s attorney stated that the fair use defence under Section 1115(b)(4) of the Lanham Act allows anyone to use the registered mark without liability. This is untrue because that section of the act provides a defence to infringement of a registered mark where a party uses a descriptive term ‘otherwise than as a mark’ and only to describe its goods or services. Should Booking.com obtain registration and sue ebooking.com for infringement, the latter would not be able to avail itself of the fair use defence because it is using its name as a mark.” See https://www.worldtrademarkreview.com/enforcement-and-litigation/trademarks-take-centre-stage-in-historic-us-supreme-court-hearing (subscription required).