trademark

Generic vs. Descriptive: A Landmark Trademark Infringement Case in the USA

Intellectual property rights is at the core of the US constitution so it shouldn’t be surprising to learn about the numerous disputes over trademark, patents, and copyright. However, some cases can be more interesting than others.

 

One such example is the case between the United States Patent and Trademark Office (USPTO) and Booking.com. The USPTO is refusing to trademark the latter’s trade name, arguing that the terms used are generic and cannot be claimed. They believe that the terms do not indicate where the service is coming from, rendering it unsuitable for a trademark.

 

Booking.com, on the other hand, argues that while the terms ‘booking’ and ‘.com’ are generic on their own, using them together makes their brand distinguishable and known among consumers. They emphasized that they have spent an extensive amount of time and significant amount of money in marketing to be known with the name. The term is also not used to refer to a category of service, therefore, it shouldn’t be considered as generic.

 

The US Supreme Court ruled in favor of Booking.com, recognizing that it refers to a specific business. Many believe that this ruling can be a precedent to other businesses that will manage to use generic terms as their trade names.

 

What can happen, however, if you were found to have infringed on a trademark in the US? Find out below.

 

What are the Penalties for Trademark Infringement in the U.S.A.?

Trademark infringement is the unlawful use of a registered trademark, in tangible goods or intangible services, in a method that is likely to generate confusion, dishonesty, or mistake as to the origin of the goods and/or services protected under a registered trademark.

 

Before any penalties will be meted out, a formal complaint will have to be raised by someone who will be named as “complainant” or “plaintiff” against someone else who will be named “defendant.” This stems from the illegal use of a trademark officially registered by the Complainant.

 

It is a good measure to abide by the law in setting up and running a business to avoid the hassles of a lawsuit. This lawsuit may be set at a state or a federal court, as the complainant chooses, though the defendant may challenge the selection.

 

When the plaintiff presents the legal trademark, the court will then set itself into the determination of the case. There are many factors the court will have to take into consideration before the defendant may be penalized for infringement.

 

One of these factors, and a very important one, is the degree of resemblance of the two marks used on the goods or services that will imply to the consumers that both come from a mutual source resulting in confusion.

 

Naturally, the court will also hear how and where both parties’ goods or services were introduced and peddled; which came first, scope of the market, to name a few. There are also techniques adopted by both parties towards the resolution of the case.

 

When the likelihood of confusion is dim (the consumer will not confuse one from the other), dilution of a superior product may be claimed by the plaintiff. This will provide more evidence on file and provide a more vivid picture of the characters in the case.

 

The number of evidence, and its quality, will enable the court to dispense a fair trial.

 

If in the event that the defendant is found guilty of trademark infringement after all the evidence and deliberation, the plaintiff may find available relief that may contain the following:

 

  • an injunction that instructs the defendant to cease from using the infringing mark;
  • a court order that entails the demolition or forfeiture of the accused mark;
  • financial gains, including damages incurred by plaintiff, profits of defendant, cost of lawsuit;
  • an injunction that the defendant will pay the plaintiff’s counsel fees; this happens seldom, but it does.

 

Did you find the information useful? If so, continue reading our posts.

 

If you need to get professional help, please contact us for free consulation. We are a Hong Kong Patent Application Grant authorised patent agent and offer international trademark registration and patent application.

 

CtR Intellectual Property Co.

Hong Kong Patent Application Grant Authorised Patent Agent

Offering Professional Patent and Trademark Application & Related Services

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