This past June, the U.S. Supreme Court decided that Booking.com, a travel reservation company could trademark its name.  The ruling overrules the United States Patent and Trademark Office which determined that the name was “generic.”  The United States Supreme Court determined that the name was distinct enough to trademark. 

The dispute arose as the company attempted to trademark its name but was refused on the grounds that the name was “generic” as it was a term for a category of services.  The addition of “.com” did not transform it into a protected trademark.  The court relied in part on surveys that Booking.com refers to a particular company and not a general online hotel reservation service.

In general, trademark registration is likely of a mark if it is inherently distinctive as opposed to being “merely descriptive.”  A descriptive term could be eligible for registration if it has obtained “acquired distinctiveness” or “secondary meaning,” something that must be proven.  Booking.com presented an interesting question because it was denied registration on the basis of being generic.  The USPTO argued that the addition of “.com” to the name did not provide any “protectable meaning” to an otherwise generic term. 

The Court argued that the determination of generic is dependent on its meaning to its consumers. 

The ruling is considered narrow in scope because adding “.com” to any generic term will not mean that the mark applicant will receive a registration. There is still the hurdle of proving that the mark has acquired distinctiveness and is associated by consumers with a specific source of goods or services. 

The ruling does provide another layer of protection for brands that may have a presence online.  Whether or not we will see an expansion in trademark registrations based on the ruling is something to monitor.    

Activision, the makers of the Call of Duty, received a win in the U.S. District Court for the Southern District of New York over AM General, LLC from a lawsuit stemming from the use of Humvees in its video game.  The Court determined that the use of the vehicle without authorization did not infringe on the company’s trademark as the game makers were protected by the First Amendment.

Humvee Lawsuit – Order on MSJ by MMA Payout on Scribd

The Court also granted Summary Judgment for Major League Gaming, an esports league that was also a co-defendant in the lawsuit.

Call of Duty is a video game described in the opinion as one of the “most popular and well-known video game franchises in the world” with over 130 million units sold.  It is a first-person shooter series developed, produced, and distributed by Activision. 

The overarching issue with the lawsuit which drew many eyes from the IP community is the potential that it would muddle the test established in Rogers v. Grimaldi.  In that case, the Court endorsed a test as to whether the use of a mark has artistic relevance, and if so, whether the work is explicitly misleading.  The opinion states:

[t]he balance [between trademark interests and First Amendment speech interests] will normally not support application of the [Lanham] Act unless [the use of the trademark] has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless [the use of the trademark] explicitly misleads as to the source or the content of the work.”

Essentially, courts must “strike the balance between the two competing considerations of allowing artistic expression and preventing consumer confusion.” 

The makers of Humvee, the Plaintiff in this case, indicated that the Court should establish an additional eight-factor test for consumer confusion set forth in Polaroid v. Polarad. Humvee argued that the “explicitly misleading” prong could be satisfied upon particularly compelling evidence of the likelihood of confusion. 

When acknowledging the Polaroid test, the Judge finds in favor of Activision as he believes that the use of Humvees in Call of Duty has some artistic relevance.  The Judge states, that “realism can have artistic merit in itself,” in supporting Activision’s argument for its use in the game. 

The opinion in the Humvee case may provide some guidance in interpreting the balance between the First Amendment and Lanham Act protections.  Here, the Court sided with Activision for its use of the Humvee in its video game because the depiction of realism has “artistic merit.”  The question is whether this ruling expands the bounds of First Amendment protection for those that would like to use brands in video games, video, books, etc.  One might argue that the definition of “artistic merit” under the guise of First Amendment is being expanded to depict realism. 

We will see if the makers of Humvee push back with an appeal.