On June 30, 2020, Justice Ginsburg, writing for the Supreme Court, concluded that the addition of “.com” to a generic mark can be sufficient to elevate the mark beyond genericism and trigger federal trademark protection.

Previously, Booking.com was denied federal trademark recognition on the basis that it was a generic term, signifying a class of online hotel-reservation services rather than a particular brand or service of that class. Both the examining attorney and the Trademark Trial and Appeal Board (“TTAB”) concluded that the term “Booking.com” was generic for the services it provided and was therefore unregistrable. The TTAB, the PTO Appeal Board, analyzed the two components of the mark separately, concluding that “Booking” represented a generic term that was indicative of making travel reservations; and adding “.com” did not enhance the distinctiveness of the mark, it merely represented that the service is located on a commercial website. Booking.com sought review in the U.S. District Court for the Eastern District of Virginia, where that court relied on evidence of the consuming public’s understanding of the mark in determining that Booking.com met the distinctiveness requirement for trademark registration. The PTO did not appeal the District Court’s determination of how consumers perceived the term “Booking.com”, and instead only appealed that court’s holding that the mark was not generic.

Continue Reading Booking Is Generic But Booking.Com Is A Registerable Trademark

The videoconferencing platform Zoom has become a ubiquitous part of the new normal and an integral part of American life during the recent coronavirus pandemic. With such widespread adoption at an exponential pace, does the brand risk becoming a generic term like Aspirin, Elevator, and Thermos? Or will the brand be able to hold on to its trademarked ground like Kleenex, Band-Aid and Xerox, which are still legally protected trademarks even though they are frequently used as generic terms.

Continue Reading Is <i>Zoom</i> On The Verge Of Becoming A Generic Mark?

In recent weeks, the Administrative Office of the Courts has released its statistics, and the news is not surprising. The courts in New Jersey are facing an unprecedented backlogs, and the Family Court has been hit particularly hard.

For those facing divorce, custody issues, post judgment issues, or any family matter, there are alternatives to consider.

Continue Reading The Pandemic Has Hit the Family Courts – What Should I Do Now?

As you may already be aware, Stark & Stark has assisted countless investment advisers with regulatory, legal, and compliance matters over the past thirty plus years. We have assisted our clients with registration issues, preparing policies and procedures, interpreting and advising on new rules and regulations, avoiding and defending litigation, and serving as counselors. We look forward to continuing to be able to serve our clients in this manner for countless more years to come.

Continue Reading Outsourced Compliance Services

Since it first announced its “Cybersecurity Initiative” in April 2014, the SEC’s Office of Compliance Inspections and Examinations (“OCIE”) has been relentlessly setting its sights on RIA’s information security programs. In fact, as recently as its 2020 Examination Priorities, OCIE noted it will “continue to prioritize information security in each of its five examination programs.” I spoke to my partner, and our cyber expert, Cary Kvitka, regarding this ever-increasing important issue.

We’ve been helping RIAs draft customized cybersecurity policies and procedures under Regulation S-P, Rule 30(a) since April 2014. Among other things, it broadly requires RIAs to adopt written policies and procedures addressing technical safeguards to protect their clients’ data “against any anticipated threats or hazards to the security or integrity of customer records and information; and protect against unauthorized access to or use of customer records or information that could result in substantial harm or inconvenience to any customer.” Therefore, when we customize written cybersecurity policies and procedures for our clients, we have turned to OCIE’s published guidance to help identify and address their expectations.

Continue Reading Cybersecurity Amid the Current Pandemic

CBD is more common than ever these days, conveniently placed on your local corner store’s checkout aisle. But are they legal to purchase in your state? What about their names and logos, can they be federally registered as trademarks?

Continue Reading CBD May Be Legal, but Challenges Still Persist in Obtaining CBD Product Trademark Registration

Section 45 of the Lanham Act states a trademark is considered abandoned when “its use has been discontinued with intent not to resume such use.” Abandonment may be inferred from the surrounding circumstances, but proof of nonuse for three consecutive years is prima facie evidence of abandonment. Since use of a mark must be bona fide and registration cannot be used to reserve rights in a mark (apart from intent to use applications), a challenger seeking to cancel a registration on the basis of abandonment must either provide evidence of three consecutive years of nonuse or prove (1) the respondent discontinued use, and (2) the respondent intended not to resume use.

Continue Reading Proving Abandonment: How Trademark Rights Can Be Lost Through Non-Use

Late Tuesday June 30, 2020, just a few hours before the expiration of Paycheck Protection Program (PPP), the Senate voted to extend the PPP five more weeks. The move was made to allow eligible small businesses that have not applied or been denied a loan under the PPP more time to claim the remaining $129 million in the program.

Continue Reading Paycheck Protection Program Extension

Copyright law affects one’s rights and ability to use another’s work, including writings, drawings, photographs, paintings, software codes, or even business plans. The purpose of copyright law is to promote the creation of works by giving authors exclusive property rights; copyright law is intended to encourage the dissemination of these works, bolstering a competitive marketplace.

Continue Reading What You and Your Business Need to Know About Copyright Law and Infringement

Earlier this month, the Eastern District of Pennsylvania confirmed social media platforms’ immunity under the Communications Decency Act (CDA) for right of publicity violations by users and members of the platforms. Several years ago, Karen Hepp, a newscaster for Fox 29 Philadelphia and co-host of Good Morning Philadelphia, discovered that her image, via a photograph unknowingly taken of her by a security camera in a New York City convenience store, was being used in conjunction with online advertisements for dating websites posted on Facebook. Additionally, the photo had been posted to Imgur and Reddit in several sexually explicit contexts. Not only did she never consent to having her image used for such purposes, she also was allegedly unaware that the photo had been taken in the first place.

Continue Reading The Communications Decency Act Protects Social Media Platforms Like Facebook, Instagram, and Reddit from Common Law Right of Publicity Violations