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Firm Associate, W. John Eagan, Leads Trademark Bootcamp for Next Generation of Intellectual Property Attorneys

Firm Associate, W. John Eagan, Leads Trademark Bootcamp for Next Generation of Intellectual Property Attorneys

Firm Associate, W. John Eagan, was asked by the University of Miami School of Law’s Intellectual Property Law Society to “roll up his sleeves” and put interested law students through an intensive, ninety-minute “bootcamp” on trademark law. The seminar covered the basics of trademark law, including selection of strong trademarks, clearance searching, and an overview of the application process. John routinely handles such matters as part of his practice from both of the firm’s Miami and Boca Raton offices. 

Supreme Court Set to Decide When Trademark Infringers May Be Required to Turn Over Profits

The case of Romag Fasteners v. Fossil is scheduled for argument before the Supreme Court of the United States during the court’s October 2019-2020 term.  At issue is whether, under the Lanham Act, willfulness is a prerequisite for an award of the infringer’s profits.  Under the current landscape, the Third, Fourth, Fifth, Sixth, Seventh, and Eleventh Circuits have held that willfulness is not an absolute requirement in order for the plaintiff to recover profits.  On the other hand, the Second, Ninth, Tenth, and District of Columbia Circuits have disagreed, stating that a willfulness finding is required in order to award the infringer’s profits to the plaintiff.  The Supreme Court’s ultimate ruling on the issue will potentially resolve the sharply divided circuit split, and provide trademark owners a clearer roadmap in terms of damages and financial recovery following a finding of infringement.

Can Booking.com Serve as a Protectable Trademark?

On Friday, November 8, the Supreme Court granted the federal government’s petition for review in U.S. Patent and Trademark Office v. Booking.com. The issue to be reviewed is whether the addition of the generic top-level domain “.com” to a generic term can create a protectable trademark.

The dispute first arose when Booking.com applied to register trademarks containing the term BOOKING.COM in connection with online hotel reservation services. The USPTO refused registration on the ground that the term “booking” is generic for the underlying services in the application and that the addition of the generic top-level domain “.com” did not create a protectable mark. The decision was reviewed by the United States District Court for the Eastern District of Virginia, which held that BOOKING.COM was non-generic and potentially protectable as a trademark. The Fourth Circuit affirmed.