Author: TSA Press

When it comes to trademarks, descriptiveness is not good thing.  It makes sense — when a term or phrase describes some ingredient, quality, or characteristic of the goods or services in question, it does not lend itself to being a source identifier.  When terms or phrases are so descriptive that they cannot function as a source identifier, then such terms or phrases are deemed “generic.”  For domain names that operate as trademarks, this begs the question: Can the addition of a generic top-level domain extension (such as .COM) to an otherwise generic term create a protectable trademark?  This seems to beg the question presented to SCOTUS in United States Patent and Trademark Office v. Booking.com B.V.

The facts here are quite simple. Amsterdam-based Booking.com (a division of Booking Holdings, Inc.) is a travel aggregator website operating as a metasearch engine for hotel reservations.  The website began using the name back in 2006 and began its journey for federal trademark protection in 2011.  To make a long story short, the United States Patent and Trademark Office (USPTO) rejected the applications claiming that the term “booking.com” was generic for hotel booking services.  For example, the USPTO did not mince words in its final Office Action refusing the trademark application Ser. No. 79122365, claiming that the addition of the .COM top-level domain to “the generic wording adds no source-identifying significance but retains only its significance as a TLD,” thereby failing to serve as a source identifier.  The refusal was affirmed on appeal to the Trademark Trial and Appeal Board, and the matter proceeded to the United States District Court for the Eastern District of Virginia.

This is where things get bit interesting — the district court sided with the company.  Although the district court recognized that “the term ‘booking’ is generic” for hotel reservation services, the district court held that top-level domains (such as “.COM”) “are generally source identifying and that a mark composed of a generic [second-level domain] and a [top-level domain] is a descriptive mark eligible for protection upon a showing of acquired distinctiveness.” Yep — the district court basically relied upon favorable survey evidence to conclude that the trademark had acquired secondary meaning.  The Fourth Circuit Court of Appeals affirmed the finding, and now SCOTUS has granted certiorari to hear the case.

This case is interesting because it goes to the heart of whether generic terms can shed their “genericness” by the addition of a top-level domain and acquire secondary meaning over time.  We are not talking about merely descriptive terms here that describe the nature, quality, ingredient, or other characteristic of the term for the class of goods or services that are not inherently distinctive but can, in some cases, acquire secondary meaning in the marketplace. Unlike such merely descriptive terms, generic terms go a step farther.  Generic terms are common names that an ordinary consumer understands primarily as describing the family (or “genus”) of the trademark applicant’s goods and/or services.  By definition, such terms cannot indicate the source of goods and/or services, and cannot qualify for federal trademark registration.  This makes sense — the terms “corn flakes” or “restaurant” describe a general type of goods or service, not whose goods or services from which they emanate.

So what gives here?  As evident from the petition for certiorari to SCOTUS, it seems that the Fourth Circuit “concluded that BOOKING.COM, taken as a whole, is not generic because the relevant public would primarily understand the term to indicate [Booking.com’s] brand… [relying] in significant part on [the] Teflon survey, rejecting the USPTO’s argument that such survey evidence is irrelevant to the question whether BOOKING.COM is generic.”

Although the appeals court acknowledged that a term previously held to be generic cannot have that designation changed by subsequent consumer recognition of the term, the court nevertheless held that such a rule only applies where “a prior court” held the term to be generic or was “previously commonly used” by the public. In essence, a term that has been held generic or is otherwise commonly used by the public will not qualify for registration, but somehow miraculously does not qualify as generic (and can acquire secondary meaning) if it does not meet those criteria?  If you are scratching your head, rest assured, I am too.

At first glance, the district court and Fourth Circuit seem to have been persuaded by survey evidence that weighed in favor of the company.  I don’t know about you, but I don’t think that survey evidence can render a generic term like “restaurant” registrable.  Perhaps that is the point — the term “booking” may be a term well-known in the hospitality industry for placing a reservation, but maybe the term is not really generic.  For example, the term “booking” is not solely relevant to the hospitality industry; it arguably operates as a term of art in law enforcement for placing an arrestee into the criminal justice system.  I guess reasonable minds will differ. Let’s just hope that SCOTUS provides some much-needed clarification in the process.

Tom Kulik is an Intellectual Property & Information Technology Partner at the Dallas-based law firm of Scheef & Stone, LLP. In private practice for over 20 years, Tom is a sought-after technology lawyer who uses his industry experience as a former computer systems engineer to creatively counsel and help his clients navigate the complexities of law and technology in their business. News outlets reach out to Tom for his insight, and he has been quoted by national media organizations. Get in touch with Tom on Twitter (@LegalIntangibls) or Facebook (www.facebook.com/technologylawyer), or contact him directly at tom.kulik@solidcounsel.com.

This year, bonus season came early, what with Milbank jumping the gun and announcing bonuses very early — November 7th, to be precise. But with bonus levels the same as last year, lots of folks were actually disappointed about the static amounts and thought Milbank had work to do to live up to its “Thrillbank” moniker.

So with the first bonus volley welcomed, but a little lackluster, Biglaw waited for perennial compensation leader, Cravath, to make their move. If they up the ante, then that becomes the new industry standard for those firms wanting to prove their position at the top of the Biglaw heap. If they hold the line, well, with fears of a recession looming, who could blame them? But either course would shape the tone of the rest of the bonus season.

Well, the wait is over. This afternoon, they announced, and, well, here are the numbers:

Class of 2019 – $15,000 (pro-rated)
Class of 2018 – $15,000
Class of 2017 – $25,000
Class of 2016 – $50,000
Class of 2015 – $65,000
Class of 2014 – $80,000
Class of 2013 – $90,000
Class of 2012 – $100,000

Yup, it’s the same as Milbank (and last year’s bonuses). So, for the time being at least, Cravath is letting Milbank set the standard. It seems likely that now that these two compensation powerhouses have weighed in, the rest of the industry will fall in line. (Read the full memo on the next page.)

Early reactions from ATL tipsters are similar to the murmurings from Milbank’s announcement:

Cravath announces bonuses and they’re the same. Cravath associates disappointed given many recent successes for the firm and the fact that 2018 compensation was higher with summer bonus.

But the economy is in a precarious position, and this move is right on-brand for a traditionally risk adverse industry (and still generous despite them being the same as last year’s bonuses).

What do you think about Cravath’s 2019 bonuses? Sound off by text us (646-820-8477) or email, funny or otherwise interesting thoughts could make it into an update or follow up to this story. Speaking of contacting Above the Law, remember, we depend on your tips to stay on top of important bonus updates, so when your firm matches, please text us (646-820-8477) or email us (subject line: “[Firm Name] Matches”). Please include the memo if available. You can take a photo of the memo and send it via text or email if you don’t want to forward the original PDF or Word file.

And if you’d like to sign up for ATL’s Bonus Alerts (which is the alert list we also use for all salary announcements), please scroll down and enter your email address in the box below this post. If you previously signed up for the bonus alerts, you don’t need to do anything. You’ll receive an email notification within minutes of each bonus announcement that we publish. Thanks for your help!

Kathryn Rubino is a Senior Editor at Above the Law, and host of The Jabot podcast. AtL tipsters are the best, so please connect with her. Feel free to email her with any tips, questions, or comments and follow her on Twitter (@Kathryn1).

I am sure that some of you (perhaps all of you) wondered whether Elie Mystal had finally spiked my column for good. No such luck, kiddos. I am presently recovering from extensive back surgery (not my idea of a fun time). I tried to keep up with what was happening, but with the anesthesia brain (yes, there is definitely such a thing, at least for me), the drugs (including but not limited to prescribed opioids), and the constant interruptions while confined to a hospital bed (a place populated by efficient and pleasant vampires), it was not just my eyes that were glazed over. As a wise man once said, “You don’t get any rest in a hospital.” So true.

I’ve provided unsolicited advice on any number of topics over the past few years, and so, here’s some more. The subject is one that we don’t want to think about, but shit happens, as it did to me.

What is your contingency plan if you become ill and are unable to work? What are you going to do? How will you keep your practice going? Who will make appearances for you?  Who will get the work done? How will you pay your bills?

These are not idle questions. They are questions that can and do bring you up short if you have never given them any thought, and I doubt that many of us have, especially the younger among us, who think and act as if they are invincible. They aren’t; we aren’t. Life can turn on a dime.

Not only do we have to have answers to these questions, we also need to be mindful that we need to make sure that our clients don’t think we’ve abandoned them if we are not responsive to their inquiries. Just pile on a disciplinary complaint to add to your misery at the same time you’re trying to recover so that you can return to work and respond to client inquiries, if someone hasn’t already done so.

How many complaints does a state bar receive about a lawyer’s lack of communication?  And how many of those could be prompted by a lawyer’s disability, whether temporary or permanent?

What I am suggesting is a different kind of succession planning, one not for a permanent transition, but for a temporary one, one that covers the time when you are unable to work. You can think — and many do — that it won’t happen to you, but don’t be overconfident. You are not immune. Slipping on a banana peel, a variation of what I did, is easier than you think and leaves you vulnerable, something that we all hate to be.

We are reluctant to let colleagues know that we have workload issues; we are just as reluctant to ask for help on a temporary basis. We fear losing clients, losing work, losing income, but sometimes, we have no choice. For those in solo practice or small firms, benefits do not necessarily include short-term and/or long-term disability insurance.

There is no one right way to handle this situation. Should you continue to work while temporarily disabled? Are you on medication? Are you competent to practice while on drugs?  You tell me.

Remember that a state bar’s disciplinary body doesn’t give us a “get out of jail free” card if we screw up while using the “temporarily disabled” excuse.

So, here’s my unsolicited advice (isn’t it always?):

1. Have a contingency plan in writing (don’t rely on a drug-addled haze to communicate your plan).
2. Give copies of the plan to several colleagues you trust. Hopefully they have some inkling if not more of your practice areas. Don’t ask a transactional lawyer to handle your litigation calendar — and the reverse is equally true.  Some subject matter expertise is always a help.
3. Even if it pains you financially and personally, don’t go back to work until drugs are out of your system, and whatever anesthesia brain you may have had is gone. As a dinosaur, the effects of anesthesia can linger for some time and the cognitive effects are not to be dismissed.
4. Have a “rainy day” fund available. It may not be much, but every little bit helps for those copays and deductibles.

As for me, I get sprung out of my back brace in less than five weeks, but I am not taking any mediations right now. I think that to do so would be a disservice to the attorneys and clients who hire me to resolve cases. I’m not patting myself on the back for what I have decided. It’s a desire to limit reputational risk, and what I think is the right thing for me to do. It may not be the same for you. Anyway, patting myself on the back is not something that I can easily do these days.

Jill Switzer has been an active member of the State Bar of California for over 40 years. She remembers practicing law in a kinder, gentler time. She’s had a diverse legal career, including stints as a deputy district attorney, a solo practice, and several senior in-house gigs. She now mediates full-time, which gives her the opportunity to see dinosaurs, millennials, and those in-between interact — it’s not always civil. You can reach her by email at oldladylawyer@gmail.com.

Another day, another court loss for Donald Trump in his ongoing attempts to shield his tax returns from lawful subpoenas.

In the gallery of epic benchslaps Trump has received from federal courts (so far my favorite is still the 75-page smackdown from U.S. District Judge Victor Marrero), the beating administered to Trump today is pretty tame. U.S. District Court Judge Carl Nichols kicked one of Trump’s arguments about the laws passed in New York regarding tax returns from his court in D.C. It was purely a jurisdictional ruling. Here’s the conclusion from the ruling:

Based on the current allegations, Mr. Trump has not met his burden of establishing personal jurisdiction over either of the New York Defendants. The Court therefore need not reach the question of proper venue. Accordingly, the New York Defendants’ Motion to Dismiss is GRANTED, and Mr. Trump’s Amended Complaint is DISMISSED without prejudice as to them. Mr. Trump may press his claims against the New York Defendants in this Court should future events support the exercise of personal jurisdiction over them, or he may opt to pursue those claims in an appropriate forum.

Trump’s legal arguments are almost always wrong and usually offensively bad. This one is no different. There was literally no reason for him to bring this suit in D.C., and Judge Nichols said so.

The only interesting thing here is that Nichols falsified records and switched the samples to bring you Provasic. Just kidding, that was Dr. Charles Nichols, not Judge Carl Nichols. But Judge Nichols is notable for being a judge appointed by Trump. Most of Trump’s federal losses are handed to him by judges who were appointed by other presidents. Nichols was confirmed this past May. Having one of Trump’s crazy and stupid arguments kicked by a fresh-faced Trump judge is not something we’ve seen before.

That’s probably also why Nichols’s decision was so openly begging Trump’s lawyers to refile in New York. But, I don’t think it will do much good in New York as the Second Circuit has already weighed in on the dumbass arguments Trump is making up there.

We’re all just waiting for the administration to ask different Trump judges — Neil Gorsuch and alleged attempted rapist Brett Kavanaugh — to bail him out.

Elie Mystal is the Executive Editor of Above the Law and a contributor at The Nation. He can be reached @ElieNYC on Twitter, or at elie@abovethelaw.com. He will resist.

HBO’s Last Week Tonight and its host, John Oliver, have been in a years-long litigation battle with coal magnate, Bob Murray. Earlier this year, Murray finally removed his lawsuit, which allowed Oliver to go full anti-SLAPP on his show:

It’s a pretty epic response. Oliver explains why we need federal anti-SLAPP laws, while also torturing Murray with jokes knowingly crafted to comport with all defamation standards. Lawyers will note how many times Oliver says “I would argue” in the segment, a turn of phrase that is not natural to Oliver’s show yet is dutifully repeated throughout. It’s funny, but it’s also an important piece about how people like Murray use frivolous lawsuits to chill free speech and journalism.

I didn’t really laugh, though. Without the protection of federal anti-SLAPP legislation, or HBO’s bankroll, I live in near constant fear of people like Bob Murray. It’s cathartic to make fun of them, but ultimately they’re winning. The law has not kept up with the strategy of quelling journalism through lawsuits. Oliver can say, “Come at me, bro.” I can’t risk that heat.

Elie Mystal is the Executive Editor of Above the Law and a contributor at The Nation. He can be reached @ElieNYC on Twitter, or at elie@abovethelaw.com. He will resist.

We’ve heard the story so many times. Many potential clients ask questions and, seemingly, are looking for free legal advice. But not all of them. In fact, most of them are genuinely seeking legal counsel. But how do you know who is ready to hire?  Well, the first step is actually responding to them.

Remember, for most people, legal matters can feel overwhelming. And technology is making it increasingly simple to research law firms online. So the initial interaction can be quite impersonal. The trick is to bridge the electronic gap and try to build rapport with these potential clients. In this infographic, you will get some tips on how to do just that. Whether it’s now or later, give these potential clients a reason to engage your firm. And, even better, give you a positive online review and refer your firm to others, too. Technology is a method to connect people, but not a real connection.

(Juliana Lamar, a recent graduate of Belmont University College of Law, interned with Dinkins during her first year of law school, and was mentored by him as a 2L. Sarah Martin, one of Lamar’s law school classmates, filmed the swearing-in ceremony, and noted that not only did her friend gave birth to her son during their third year, but that she was a “badass” who was “back at school within a week of an emergency c-section before she was even allowed to drive or climb stairs.” Congratulations!)

Staci Zaretsky is a senior editor at Above the Law, where she’s worked since 2011. She’d love to hear from you, so please feel free to email her with any tips, questions, comments, or critiques. You can follow her on Twitter or connect with her on LinkedIn.

I’m getting tired of listening to the same old questions asked of the candidates during the Democratic primary debates:

“Could you please squabble some more about health care?”

“Could you please try to outdo each other on climate change?”

“Could you please rant about the need to get money out of politics?”

Let’s try some new ones:

“Do you promise that you will appoint no political ambassadors, and all of your ambassadors will come from the ranks of career foreign service officers?”

This has been a hot issue lately, and it’s surely worth asking about.

A few of the candidates might jump at the chance to make this commitment.  That would be interesting.

Several of the candidates will insist that they don’t take money from the wealthy, so there’s no chance that they’d appoint political donors as ambassadors.  Fair enough.  (They’d probably appoint their brothers-in-law, but that’s another story.)

Surely a few of the candidates would insist that there’s a need for political ambassadors, because every once in a while you get a good one.  For those candidates, the questioner should follow up:  “Yeah, but you get about one good ambassador out of a hundred from among political appointees and one good ambassador out of two when you pick from among career diplomats.  Why not take my pledge and increase the odds that you’ll have decent appointees?”

However you feel about the issue, you’d probably be interested in the discussion.

Next question:

“We hear an awful lot about ‘white privilege’ these days.  What about ‘political privilege’?  Should the relatives of politicians be given jobs for which they’re not qualified simply because of nepotism?  If you agree that this is wrong, can you give a few examples of unqualified people who’ve been the beneficiaries of ‘political privilege’?”

That’s probably too easy for most of the candidates.  They’d agree that people shouldn’t get jobs for which they’re not qualified and, because the debates are among Democrats, they’d all rail about the president’s children.  The questioner shouldn’t accept that:  “Can you give any examples of relatives of Democratic politicians who’ve gotten advantages because of familial relationships?”

This starts to get interesting.  Joe Biden is put to the test.  Does anyone care to go after the Clintons, whose daughter is getting vast publicity for her new book because of the identity of her co-author?  (Would the child of Joe Bag-o’-Donuts get the same publicity for the child’s book?  Or is co-authoring a book the sort of advantage that the children of politicians legitimately get, unlike jobs?)  Would anyone care to reach back in history and think about one particular appointment made after the 1960 election?  Any other historical examples?  This is a real chance to show knowledge, and guts, for candidates who possess one of those things.

Last question for the candidates:

Did you know that today was the ninth anniversary of Mark Herrmann’s column at Above the Law?

The candidates would certainly be shocked:  “Has it really been that long?  It feels like only yesterday.”  “That’s 550 columns!  Truly remarkable!”  “He ran out of things to say in 2012; why’s he keep writing the damn thing?”  And so on.

But surely those candidates, like you, would be tempted to click on this column and celebrate with me.

Not only that — this column had a smidgen of substance, unlike my previous birthday columns, which were designed solely as clickbait.

Anyway, as long as you’re here, I’ll remind you to read my cutest column of all time:

“Things My Son Said . . . ”

(Although the little turd’s now in a pediatric critical care fellowship.  Eight years will do that to a guy.)

And read the first honest advice you’ll get about whether blogging yields business for a lawyer at a large firm, from a guy who blogged at a large firm before moving in-house:

“Blogging For Business Development.”

(I’ve re-titled that one for today’s purpose.  You get wiser as the years pass.)

Or how about advice on business development generally, from someone who actually attracted a little business before going in-house:

“Building A Practice:  A Case Study.”

Or how about the 547 other little ditties that have appeared in this space across the years?

550 columns.  Nine years.  Heaven help me.

Ah, well.  Another year gone by.  Another clickbait scam to entice others to celebrate my anniversary with me.  Another slice of cake.

And another thank you for have followed along for all this time.

Celebrate with me!  And remember:  Drink responsibly.

Mark Herrmann spent 17 years as a partner at a leading international law firm and is now deputy general counsel at a large international company. He is the author of The Curmudgeon’s Guide to Practicing Law and Inside Straight: Advice About Lawyering, In-House And Out, That Only The Internet Could Provide (affiliate links). You can reach him by email at inhouse@abovethelaw.com.

* Settlement talks are underway to break up Cellino & Barnes into two separate firms. No news yet on which firm will keep the infamous jingle. [Buffalo News]

* A winner has finally been declared in the close San Francisco District Attorney race. [Washington Post]

* Woody Allen has ended his year-long lawsuit against Amazon involving Amazon canceling projects with Allen over #MeToo allegations. [New York Times]

* A North Carolina attorney has pleaded guilty to tax fraud for paying hundreds of thousands of dollars in personal expenses, including plastic surgery, out of his business account. Can’t he argue that plastic surgery is a business expense? [Charlotte Observer]

* Hundreds of Penn Law community members have voiced dissatisfaction with the school’s new name honoring a donor. Hey, money talks. [Daily Pennsylvanian]

* A Queens attorney has been sued over extremely graphic allegations of sleazy behavior in the workplace. This attorney must not practice employment law. [New York Post]

Jordan Rothman is a partner of The Rothman Law Firm, a full-service New York and New Jersey law firm. He is also the founder of Student Debt Diaries, a website discussing how he paid off his student loans. You can reach Jordan through email at jordan@rothmanlawyer.com.