Published on August 30, 2021 by Morgan Black
Recently, students in Associate Professor Tim McFarlin’s Intellectual Property Law class engaged in a virtual discussion with Jared I. Kagan, an associate in the New York office of law firm Debevoise & Plimpton LLP. Kagan was an integral part of the team that successfully represented Booking.com before the U.S. Supreme Court last year in the landmark trademark case U.S. Patent and Trademark Office v. Booking.com.
In the case, the Supreme Court rejected the U.S. Trademark Office’s proposed per se rule that a generic term combined with “.com” must automatically be deemed generic and ineligible for trademark protection. The decision affirmed that “Booking.com” was not generic for hotel-reservation services because consumers perceived it as a brand name, and it could therefore be registered as a trademark. The decision is important because it provides support for other “.com” brands to secure and maintain trademark rights. Other notable aspects of the case are that it included the Court’s first telephonic oral argument and the last majority opinion written by the late Justice Ruth Bader Ginsburg.
“Jared was very gracious in sharing his insights with us. The discussion helped the class form a deep understanding of the case and the vital issues of trademark law involved in it,” McFarlin said.
Kagan, who co-chairs the Trademarks and Unfair Competition Committee of the New York City Bar Association, has been recognized by clients for his “wise counsel and guidance” on trademark issues and rated a “Rising Star” by Managing Intellectual Property IP Stars.
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