In my role as a trademark thought leader (LOL!), I recommend two recent articles that caught my interest and I think will catch yours. Professor Christine Haight Farley of American University's Washington College of Law explains why she is less than thrilled with the Supreme Court's "booking.com" decision. Professors James Boyle and Jennifer Jenkins of Duke University School of Law examine the phenomenon of brand bullies cloaked in academic robes. Links to their respective articles are found below.
Christine Haight Farley, Trademark Law's Monopoly Problem: The Supreme Court on Generic Terms as Trademarks, Landslide Magazine, Vol. 13, No. 3, January/February 2021. ["Generic.coms present an even greater risk of monopoly powers than a Generic Corp. does. As the dissent in the Fourth Circuit correctly stated, '[t]his case addresses a problem that Booking.com chose to bring upon itself.' The adoption of a generic term as a trademark always involves a problem of the applicant's own creation. Now, however, in the case of a generic.com, the applicant gets to have it both ways without having to make the usual trade-off between trademark rights and instant communication of the business offerings. Whereas the doctrine of trademark genericity follows the saying that you can't have your cake and eat it too, the Booking.com rule allows a generic.com that purchases a pricey cake to grab the key to the bakery."]
James Boyle and Jennifer Jenkins, Mark of the Devil: The University as Brand
Bully, Fordham Intellectual Property, Media &
Entertainment Law Journal (Forthcoming). ["We lack both an
empirical account of major aspects of the landscape, and a rigorous
case study giving individualized, almost ethnographic, information
about what the accused academic trademark bullies think they are
doing. What are their legal arguments and how would impartial
experts assess those claims? What is their intellectual property
world-view, their idea of the role that trademarks have in the
university's mission? In this article, we attempt to provide an
answer to those questions."]
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