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Sometimes things are just not what they seem on their face. This maxim seems to hold true in the context of trademark law, especially in light of a recent Supreme Court of the United States ruling involving generic trademarks. In United States Patent and Trademark Office v. Booking.com, the nation’s highest court held that “[a] term styled ‘generic.com’ is a generic name for a class of goods or services only if the term has that meaning to consumers.” What does this mean? All things considered, the impact will probably be less problematic for more obvious reasons than you may think.

First, some background on generic trademarks will help frame the topic. As I have written many times before (see here and here, for example), trademarks help distinguish one owner’s goods and services from those of another. With respect to the Lanham Act, a federal system of trademark registration was created that was built upon this common-law premise. Under 15 U.S.C. § 1127 of the Lanham Act, trademarks are essentially defined as “any word, name, symbol, or device, or any combination thereof” that is used by a person “to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.” In essence, a trademark distinguishes the owner’s goods and services from those of another through their use, yet also act as a source identifier of the goods and services. These elements are essential not only to obtain federal registration status, but to maintain, protect, and police such rights. So as a matter of definition, trademarks must distinguish as well as provide an identification of source. As a practical matter, generic trademarks cannot do so.

Why not? Justice Ruth Bader Ginsburg in the majority opinion on this case references the point quite simply:

The more distinctive the mark, the more readily it qualifies for the principal register [in the USPTO]. The most distinctive marks — those that are “‘arbitrary’ (‘Camel’ cigarettes), ‘fanciful’ (‘Kodak’ film), or ‘suggestive’ (‘Tide’ laundry detergent)” — may be placed on the principal register because they are “inherently distinctive.” [citations omitted]. “Descriptive” terms, in contrast, are not eligible for the principal register based on their inherent qualities alone … [because] descriptive terms must achieve significance “in the minds of the public” as identifying the applicant’s goods or services — a quality called “acquired distinctiveness” or “secondary meaning.” [citations omitted]. Without secondary meaning, descriptive terms may be eligible only for the supplemental register.

So only inherently distinctive trademarks qualify for the Principal Register at the USPTO, while descriptive trademarks must acquire secondary meaning and may be relegated to the Supplemental Register until such time as they have “acquired distinctiveness.”

As you may have guessed by now, generic trademarks are a type of descriptive trademark but are so descriptive that they cannot operate to distinguish an owner’s goods or services from those of another, or to otherwise designate the origin of such goods and services. For example, the term “beer” would be considered generic if used to describe a fermented beverage made from water, barley, malt, and yeast because it is a generic name for a type of alcoholic beverage commonly consumed worldwide — it simply does not (and cannot) describe whose beer in and of itself. In sum, a generic trademark describes the class of goods or services itself and no more.

In the present matter, the USPTO refused the attempt by online travel booking site Booking.com to federally register a number of trademark applications for “BOOKING.COM” with the USPTO on such grounds (including on appeal to the Trademark Trial and Appeal Board (TTAB) as the USPTO).  In fact, the TTAB ruled that  even if “BOOKING.COM” was descriptive and not generic, it is unregistrable because it lacks secondary meaning. Upon review by the U. S. District Court for the Eastern District of Virginia, however, Booking.com introduced additional survey evidence and persuaded the district court to hold that “BOOKING.COM” was not generic because the consuming public “primarily understands that BOOKING.COM does not refer to a genus, rather it is descriptive of services involving ‘booking’ available at that domain name.” The USPTO only appealed the holding that “BOOKING.COM” was not generic to the Fourth Circuit Court of Appeals, which affirmed the ruling. Interestingly, SCOTUS decided to hear the case.

In writing for the majority, Ginsburg stated that the inquiry “turns on whether that term, taken as a whole, signifies to consumers the class of online hotel-reservation services.” SCOTUS held that “BOOKING.COM” did not do so because none of the evidence presented in the lower courts indicated that consumers considered the compound term to be generic of online booking and travel reservations. In fact, SCOTUS rejected the per se rule preferred by the USPTO that every “generic.com” name should be considered a generic composite. Rather than hinder competition, SCOTUS ruled that current trademark law provides an appropriate “hem” on descriptive marks because any assessment of infringement requires consideration of distinctiveness, and even where some confusion may exist, common principles of fair use continue to apply. In other words, these doctrines protect against potential anticompetitiveness and operate as a check on the scope of protection for such marks.

I have seen my share of ”.com” trademarks in law practice, and rather than sound the alarm I find this ruling to be the culmination of a salient point — where evidence shows that the consuming public identifies a descriptive trademark with the trademark owner, it is likely worthy of federal trademark registration. Just adding a domain name extension does not accomplish this fact — there must be sufficient evidence that the consuming public identifies the entire trademark with the trademark owner’s goods and  services. I appreciate Justice Stephen Breyer’s concerns in his dissent regarding prior case law and how “Company” or “Inc.” add nothing, but those descriptors are a far cry from a generic top-level domain (gTLD) that helps direct the consumer to an online location separate and distinct from other gTLDs. Maybe I am more market-oriented than others, but from my perspective, it is better to let the evidence determine potential acquired distinctiveness with a generic composite trademark than rely on a per se rule that prohibits it in the entirety.

Whether you agree with this perspective or not, the point here is that using a generic term in a generic composite is inherently risky, and SCOTUS seems persuaded by evidence of consumer recognition in interpreting existing trademark law. Simply placing a generic term with a gTLD will not elevate the generic composite to the ranks of inherently distinctive marks, and acquired distinctiveness (albeit possible) is not guaranteed. I appreciate the lack of a per se rule and other established factors under trademark law — it lets trademark owners assess the risks and act accordingly when it comes to generic composites. Simply put, sometimes generic may not be, well, so generic.

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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.

I met Ed Fallon when we were both in our early 20s. I was looking for a third roommate in my run-down, three-story, sloped-floor apartment in Somerville, Massachusetts, on the border of Cambridge.

He was an itinerant musician, believer in all causes to save our planet, and general nice guy. We campaigned against nuclear power together, and I followed his trajectory as he grew from farming his family property in Ireland, to winning a seat in the Iowa house of representatives, to hosting a radio talk-show and, in the past few years, to organizing the longest climate-change march in history.

In 2014, Ed got together 50 people to walk across country from Los Angeles to Washington, D.C. Their efforts were aimed at bringing a discussion of climate change to the people they’d meet along the way. The trip was at once exhilarating, litigious (some group members turned against each other and ultimately voted Ed out as leader), and dangerous, single-filing it along narrow highways, camping along roadsides and in deserts and mountains exposed to both extreme heat and brutal cold. Some 25 made it all the way on foot to D.C., hoping to meet with President Barack Obama. (They met with his key climate staff, instead.) While Ed had been involved in environmental issues most of his life and in climate activism since 2007, he figured he had to do something bigger and more attention-grabbing.

The national climate march was a grueling cross-country trek that drew scattered media attention, required exhaustive planning, cost half a million dollars and, arguably, left the climate no better than before the walk started. You can read about the drama, pathos, and wisdom in Ed’s book, Marcher, Walker, Pilgrim, which I recommend.

Yet, according to Ed, its participants — those who made it by foot, and those who joined along the way — have become lasting save-the-earth guardians. Most continue their work in their communities today.

Social change isn’t easy. It comes in fits and starts and takes concerted effort and planning. I contacted Ed in light of the recent BlackLivesMatter demonstrations to see what advice he’d give those addressing current social justice issues. Although different than climate change, Ed sees a connection.

Here are some excerpts from that chat.

Toni Messina: You spent nine months walking across the U.S., getting sick, and barely making it. Yet, climate change issues are barely better than when you started. Did you reach your goal or was the march a failure?

Ed Fallon: Change doesn’t happen overnight. We spoke to people from everywhere, small towns to big cities. The smaller places were the most rewarding. In one 60-person town in western Nebraska, everyone came out to our campsite to have dinner and talk with us. If we changed one mind, it was worth it, though we changed many. One person might then talk to another, who would speak to another, then another. Eventually the message gets out and spreads. This is a long-term challenge. There’s no change overnight.

TM: What do you think made the biggest difference in communicating with people?

EF: The walking was particularly useful. We’d show up on Main Street, some of us playing instruments. We’d go into local diners and bars and talk to the waitress or the guy at the bar. They’d be curious. Why were we doing this? Who were we? How long did it take? Why were we on foot, especially in a country that’s in love with their cars. Making a one-on-one connection with people helps them see you’re not so different from them.  Even if they didn’t agree with us, everyone respected the commitment we made to walk. That alone was meaningful.

TM: Do you see an intersection between climate change and Black Lives Matter?

EF: Definitely. The people most hurt by climate change are people of color and the poor. In all the cities we walked through and in some rural areas, like the Native lands in New Mexico and the sandhills of central Nebraska, the power plants and factories were in their backyards. Nobody with money wants that. Pollution impacts the health of poor people most. They’re the ones living near the factories or working in them. They’re the disposable underclass. For a country obsessed with making money, you need a disposable underclass for capitalism to exist. Even in my state, Iowa, where we don’t have a large black population, a majority of the people working in the meatpacking plants are immigrants from Central America and Africa. Those packing plants have also been the location of Iowa’s most serious outbreaks of COVID-19.

TM: If you could give any advice to organizers of Black Lives Matter, what would it be?

EF: There’s a lot of overlap between social justice movements and environmental issues, and not just climate change. People should think beyond the immediate reach of their group or message and broaden the view to groups of all kinds fighting for change. These aren’t separate things — the economy, climate change, social justice, education, inequality, health care. They all affect each other. The primary problem is the focus our country puts on consumerism and capitalism above all else.

Ed may not organize another march the size or scale of the walk across America, but he feels it’s changed many lives, including his. “Walking, thinking, contemplating, slowing down to meet with people where they live and work — these are activities we should all do more of.”

“Change never comes easily. It takes concerted action and energy. But anything that brings the issue to the forefront of public discussion is a step in the right direction.”

Ed’s book, Marcher, Walker, Pilgrim, is available at www.boldiowa.com/marcher-walker-pilgrim/.

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Toni Messina has tried over 100 cases and has been practicing criminal law and immigration since 1990. You can follow her on Twitter: @tonitamess.

Virginia isn’t the worst off of any state right now, but COVID infection rates have crept up over the past couple of weeks as America continues its nationwide backslide into the pandemic. And yet Virginia remained one of the astoundingly non-zero number of states insisting on an in-person bar exam this month over every bit of public health advice.

But fear not, the state bar examiners have now heard the calls of applicants, doctors, and law school faculty and decided to cancel… the requirement that men wear ties to the exam.

Because COVID causes pulmonary issues and we don’t want infected applicants struggling with a tie to gasp for air.

The bar exam as a concept is little more than professional cosplay for these people. It is not, in fact, a courtroom or an office or a client meeting. It is not demonstrably useful in protecting the public because it, by design, fails to test applicants on the actual subject material relevant to their future practices (unlike, say, a series of practice area competency exams people could opt into to earn narrowly tailored certificates). It’s just a game where they make applicants dress up and play law school trivia.

And unfortunately when the bankruptcy of this endeavor is finally lined up against real human impacts, states are choosing the charade over public health time after time.

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Joe Patrice is a senior editor at Above the Law and co-host of Thinking Like A Lawyer. Feel free to email any tips, questions, or comments. Follow him on Twitter if you’re interested in law, politics, and a healthy dose of college sports news. Joe also serves as a Managing Director at RPN Executive Search.

Swiss drugmaker Novartis has agreed to pay more than $729 million to settle a lawsuit filed in relation to an alleged kickback scheme.

The Basel, Switzerland-based company said Thursday that it would pay $678 million in relation to speaker programs and promotional events that took place between 2002 and 2011 and an additional $51.25 million related to support for charitable co-pay foundations between 2010 and 2014. The settlement agreement was made with the U.S. Attorney’s Office for the Southern District of New York, New York state’s attorney general and former Novartis sales representative Oswald Bilotta. The company also agreed to new corporate integrity obligations with the Department of Health and Human Services’ Office of the Inspector General, which it said would change how it delivers peer-to-peer medical education programs.

“Today’s settlements are consistent with Novartis’ commitment to resolve and learn from legacy compliance matters,” CEO Vas Narasimhan said in a statement. “We are a different company today, with new leadership, a stronger culture and a more comprehensive commitment to ethics embedded at the heart of our company. I have been clear that I never want us to achieve commercial success at the expense of our values – our values must always come first and are the foundation of everything we do.”

Bilotta originally filed the whistleblower suit against Novartis in 2011, and the district attorney and New York state attorney general intervened in 2013. The company was accused of paying kickbacks to doctors in order to prescribe its drugs, including speaking fees for supposed educational events.

Novartis’ announcement comes less than a week after the U.S. district attorney for Massachusetts filed suit against Tarrytown, New York-based Regeneron Pharmaceuticals. That suit alleges that the drugmaker paid tens of millions of dollars worth of kickbacks through a copay foundation in relation to Eylea (aflibercept). Regeneron is one of several companies that have received subpoenas alleging similar schemes in 2017 and has said that it will mount a “vigorous” defense against the allegations.

Photo: Novartis

* President Trump’s former lawyer Michael Cohen may have to go back to prison because he dined out last Friday night. Unless that restaurant was Casa Bonita, it wasn’t worth it… [New York Post]

* A Virginia lawyer is in hot water for selling the stock of his two deceased former law partners and pocketing the proceeds. [Roanoke Times]

* Amazon is being sued for allegedly firing an employee for bringing her child to work. [New York Post]

* A Florida lawyer has lost his law license for settling cases without his clients’ permission. [Florida Times-Union]

* Texas has become the latest state to postpone the bar exam amid concerns over COVID-19. [Texas Tribune]

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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.

* Tennessee has become the second state in the country to delay the administration of the summer bar exam. [Nashville Post]

* A New Jersey lawyer has been disbarred for converting $92,000 from his attorney trust account. [New Jersey Law Journal]

* A Manhattan judge (before whom I argued my first motion years ago!) has dismissed a conservative group’s defamation lawsuit against the Lesbian, Gay, Bisexual & Transgender Community Center. [New York Daily News]

* Joe Biden’s campaign is preparing an army of lawyers as part of voter protection efforts. [CNN]

* The ACLU has filed a lawsuit seeking to delay an execution because the inmate’s Buddhist priest is at risk of complications should he contract COVID-19. Have to give props to those lawyers for a creative argument. [Hill]

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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.

Ed. Note: Welcome to our daily feature Trivia Question of the Day!

According to data collected by the 2020 NLJ 500 ranking, which law firm increased its headcount by an impressive 40.8 percent?

Hint: The managing partner said in October, “We’re on an aggressive growth trajectory,” and last year, the immigration-focused firm began an alliance with Deloitte.

See the answer on the next page.

Odds that George Conway gets his wish to review an advance copy of Mary Trump’s book Too Much and Never Enough: How My Family Created the World’s Most Dangerous Man (affiliate link) went up substantially yesterday as Presiding Justice Alan D. Scheinkman of the Supreme Court of New York’s Appellate Division revoked the temporary restraining order against Simon & Schuster.

The president’s brother Robert Trump, the putative plaintiff seeking to halt publication of the tell-all about the president and his family, argued in his motion for a TRO that Simon & Schuster is an “agent” of Mary Trump. Which was probably news to her actual agent, Jay Mandel of WME, who sold the book to S&S at auction. But more to the point, none of the case law has treated the publisher as an “agent” of an author, and saying it doesn’t magically make it so. The government was unable to persuade a court that S&S was John Bolton’s “agent” two weeks ago, and the Trump family won’t have any better luck this time.

“While the plaintiff has alleged, in effect, that S&S is Ms. Trump’s agent, the evidence submitted is insufficient for this Court to determine whether the plaintiff is likely to succeed in establishing that claim,” Justice Scheinkman wrote. “So, while the plaintiff is entitled to have the temporary restraining order bind any agent of the plaintiff, this Court will not name S&S as being such an agent.”

Because S&S is neither party to the confidentiality agreement entered into when the family settled its legal dispute over patriarch Fred Trump’s will, nor an agent of Mary Trump, it can’t be bound by the 20-year-old document.

S&S is not a party to the settlement agreement. The only basis offered by the plaintiff to extend the temporary restraining order to S&S are the allegations that S&S “intends to act” on Ms. Trump’s behalf in causing the publication of the book and that S&S is acting at Ms. Trump’s direction and in concert with her. However, these allegations are conclusory and not supported by any specific factual averments. Unlike Ms. Trump, S&S has not agreed to surrender or relinquish any of its First Amendment rights.

And while this order only affects S&S, the claim for injunctive relief against Mary Trump isn’t looking all that steady either. Noting that “whatever legitimate public interest there may have been in the family disputes of a real estate developer and his relatives may be considerably heightened by that real estate developer now being President of the United States and a current candidate for re-election,” the court says it may have to review the manuscript in camera to weigh the public interest against the family’s right to enforce a decades-old contract meant to protect its privacy.

So the order against Mary Trump stands, in modified form, pending a hearing next week and with the caveat that the lower court’s TRO “should be reassessed by the Supreme Court in view of the defendants’ answering papers.” Mary Trump’s counsel, First Amendment lawyer Ted Boutros, promises to file that answer today.

“It is very good news that the prior restraint against Simon & Schuster has been vacated, and we look forward to filing our brief tomorrow in the trial court explaining why the same result is required as to Ms. Trump, based on the First Amendment and basic contract law,” Boutros said yesterday.

But while the outcome of that hearing may impact Mary Trump’s ability to do publicity, it won’t restrain S&S from publishing. Which brings us back to George Conway, and the half of DC which will probably get its hands on an advance copy of the book within days.

Two weeks ago, the court refused to restrain publication of Bolton’s book based on the oft cited precedents of The Horse Is Out of the Barn and The Genie Is Out of the Bottle (cf. You Can’t Put the Toothpaste Back In the Tube). Too Much and Never Enough is scheduled for release on July 28, which means that it’s already started to ship to publishers and reviews and excerpts will soon appear in every major paper in the country. At which point the issue of prior restraint will be moot, because it won’t be prior any more.

So, while there are important First Amendment principles at stake here, as a practical matter, the TRO on Mary Trump is irrelevant. The book is coming out, and the only thing Donald AHEM we mean Robert Trump has achieved here is to bump it up to Number 4 on the Amazon bestseller charts. Which is just three spots behind John Bolton’s book.

Well played, President Streisand Effect.

Check out the decision here…

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Elizabeth Dye (@5DollarFeminist) lives in Baltimore where she writes about law and politics.