COVID-19 Brings New Procedural Hurdles to Evict Commercial Tenants in New Jersey

On July 14, 2020, the Supreme Court of New Jersey issued an order authorizing several steps to support the resumption of landlord/tenant cases during the COVID-19 crisis. The good news is that the procedures allow for resumption of adjudication. The bad news is that there still could be a delay/lag in getting a tenant out. The following is a brief discussion and some practical pointers for commercial landlords.

County Given Power to Set up Protocols

The July 14^th Order requires county court systems to come up with protocols to: (a) mediate all pending landlord tenant cases; and (b) set up trial procedures in the event cases do not settle. This allows the counties to set up a best practice system for themselves, as some counties may have a higher volume of commercial cases rather than others.

For the first part of the protocols, counties are quickly implementing procedures to meet the mediation requirements of the Order. Some counties have already started scheduling mediation over ZOOM or other video conferencing applications. However, irrespective of differences between county approaches, commercial landlords must remember mediation is a voluntary process. Meaning, “it takes two to tango”. There will certainly be many cases where: (a) landlord and tenant will not agree to mediate; and (b) cases where mediation takes places, but a settlement is not reached. The trial procedures will likely be implemented after the mediation protocols are put in place. It may take 60 or more days for trials to resume. As such, commercial landlords for the sake of finality may want to reassess their settlement stance based on this information.

Orders to Show Cause MAY Get a Hearing Date Earlier

This leads to the question of, “Does a landlord has any recourse in the event it needs to proceed with a commercial eviction action in short order?” The July 14^th Order answers that question, but the answer creates new questions and uncertainty.

Pursuant to page 2 of the order, a landlord may file an emergent Order to Show Cause application in limited circumstances to seek a prompt trial. However, the basis of that landlord/tenant action cannot be just nonpayment of rent.[1]

As most commercial landlord know, an Order to Show Cause may get you to court sooner, but it can also be costlier than proceeding in the ordinary course. Further, all applications for an Order to Show Cause will be reviewed and will proceed to a trial only if the court determines that an actual emergency exists. Examples of such emergencies, include, but are not limited to, documented violence, criminal activity, or other health and safety concerns.

The July 14, 2020 Order also acknowledges and provides that an eviction may proceed in the “interest of justice” as provided by Executive Order 106 (issued March 19, 2020). What the “interest of justice” means is open to interpretation.

Executive Order No. 106 reads, in pertinent part:

While eviction and foreclosure proceedings may be initiated or continued during the time this Order is in effect, enforcement of all judgments for possession, warrants of removal, and writs of possession shall be stayed while this Order is in effect, unless the court determines on its own motion or motion of the parties that enforcement is necessary in the interest of justice. This Order does not affect any schedule of rent that is due.

Dichotomy Created by the Orders

The general rules governing an eviction hearing, July 14, 2020 Order and Executive Order No. 106, create an interesting dichotomy: (a) to promptly move a commercial landlord’s case to trial, the landlord must meet a high bar and show that the eviction trial should proceed due to egregious circumstances such as “documented violence, criminal activity, or other health and safety concerns.” If that standard is proved through an Order to Show Cause application, the court should then schedule a trial. (b) Once a trial is scheduled, there is nothing in the July 14^th Order that would raise the bar in terms of proofs required to prevail. Presumably, Landlord could support the substance of the eviction by showing non-payment of rent, alone. The Court would also be hard pressed not to issue a warrant of removal if landlord obtains a judgment of possession at the trial. However, the net issue is enforcement of that warrant. Meaning how quickly are court officers proceeding with lockouts? That is an unknown issue and should be reviewed by counsel prior to proceeding so that a commercial landlord understands the time constraints on the same.

Accordingly, it is conceivable that a landlord meets the high bar needed to schedule a trial, but then is further delayed because the trial is simply scheduled and takes several more weeks to complete. Or, there could be an enforcement delay due to the court officers’ backlog. Although there is no precedent governing the Order to Show Cause proceeding and subsequent trial, it would be logical if the Court scheduled the eviction trial on the return date of the Order to Show Cause Application to expedite the processing of trials that need to take place on an emergent basis.

All commercial landlords proceeding under these new Orders, should consult counsel prior to any filing. Understanding the timing and pros and cons of this new system is keys to maximizing the effectiveness of your actions.

If you have questions about evicting a commercial tenant during these times, do not hesitate to reach out to Marshall Kizner, (609) 219-7449 or Thomas Onder, (609) 219-7458, Shareholders at Stark & Stark’s Shopping Center & Retail Development Group. The Group represents national regional and local commercial landlords throughout New Jersey and are here to help.

[1] The Order does provide that in the case of the death of the tenant, a landlord may file such an action for non-payment of rent.

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Now is a Good Time to Make Your Estate Plan

Living in the time of COVID-19 has heightened everyone’s anxiety. With all of the uncertainties in life, implementing estate planning documents that provide for you and your family can afford some level of relief. Estate planning documents allow you to designate agents to assist with your affairs, while providing structure to assist loved ones as they navigate through turbulent situations. Working with an attorney can help to address questions you will have about your estate plan and will offer personal guidance through this process.

While estate planning is often viewed as only having a Will in place, there are other planning documents that are critically important. A Power of Attorney appoints an agent to manage your financial and legal affairs in the event of your incapacity. The Power of Attorney must be drafted and executed correctly so that the agent has authority to conduct necessary transactions and take necessary action in a timely manner.

When a person is incapacitated, hospitals and medical providers will require a surrogate decision maker to exercise medical decision making authority. A Power of Attorney for Healthcare allows you to designate a healthcare agent who you believe is best suited to make these types of decisions. A properly drafted Power of Attorney for Healthcare protects you by enabling the agent to take timely action on types of treatment, choice of medical staff, pain management and other important issues.

Lastly, a Will is necessary to manage and distribute a person’s estate after they pass. This includes naming appropriate beneficiaries and designating executors and other fiduciaries to carry out the terms of the Will. A Will provides a basic level of protection to your spouse and loved ones and avoids unnecessary expenses for your Estate. In some instances, more sophisticated estate planning documents, including trusts, are needed to accomplish your overall goals.

A Will, Power of Attorney, and Healthcare Power of Attorney provide a basic level of protection in the event of unexpected illness or injury. Failure to have these documents in place relinquishes your right to control these decisions and will generally require Court intervention to resolve them – with the resultant costs that will follow. The uncertainties created by this void may also encourage disputes among your heirs or cause unnecessary emotional hardship. An experienced estate planning attorney will help you through this process, while being available to answer questions you may have about your unique circumstances. Now is a good time to address these issues.

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Ascena Files for Chapter 11 Bankruptcy in Virginia

Ascena Retail Group, Inc., the parent of the Ann Taylor, Lane Bryant, Lou & Grey and LOFT retail chains, filed for Chapter 11 bankruptcy on Thursday, July 23, 2020 in the Eastern District of Virginia, docket # 20-33113. According to MarketWatch, the New Jersey-based company expects to reduce debt to become profitable. Ann Taylor, Loft, Lane Bryant and other chains will continue to operate through the restructuring with about 95% of stores open, while the company reduces its footprint.

This filing is the fourth on our Top 20 Watch List issued just a few weeks ago, joining Chuck E. Cheese’s, GNC, and Brooks Brothers.

If you have an Ann Taylor, Lane Bryant, Lou & Grey, and LOFT lease in your portfolio or if you are a trade creditor owed money, Stark & Stark’s Shopping Center Group can help. Our bankruptcy attorneys regularly represent landlords throughout the country, including recently in the Eastern District of Missouri, District of New Jersey, Southern District of New York, District of Delaware, District of Minnesota and the Western and Eastern Districts of Pennsylvania regarding a variety of issues. Our Group has been counsel to landlords and trade creditors in the GNC, Stage Stores, Modell’s, Pier 1, Art Van’s Furniture, Fairway Market, Mattress Firm, Toys “R” Us, Payless, A&P, rue21, Central Grocers and Sports Authority chapter 11 bankruptcy cases. For more information on how Stark & Stark can assist you, please contact shareholders Thomas Onder or Joseph Lemkin.

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Jerry Seinfeld’s Ex-Partner Time Barred in Copyright Dispute Over “Comedians in Cars Getting Coffee”

“The Second Circuit Court of Appeals affirmed a dismissal of untimely copyright infringement claims that an ex-partner brought against Jerry Seinfeld over the hit series “Comedians in Cars Getting Coffee”. Charles v. Seinfeld, 803 F. App’x 550 (2d Cir. 2020). Plaintiff Christian Charles brought suit claiming ownership over the pilot episode of the show “Comedians in Cars Getting Coffee” that he and his production company helped develop back in 2011.

Disputing Charles’ claimed ownership of the episode, Seinfeld maintained that he conceived the show, and that Charles worked as a work-for-hire producer and director. Seinfeld filed a motion to dismiss seeking dismissal of the ownership claims based on the expiration of the three-year statute of limitations period, which commenced when Charles knew, or should have known, that ownership was disputed. The District Court granted the motion concluding that Charles should have been aware of the ownership dispute in 2012, when Seinfeld rejected Charles’ request for back-end compensation and the show premiered without crediting Charles. Because the copyright suit was not filed until six years later in 2018, which coincidentally was shortly after Seinfeld had signed a deal with Netflix for streaming the show at approximately $750,000 per episode, the court dismissed the claims as time-barred.

Seinfeld and Charles were coworkers on multiple projects since the 1990s, but the important year was 2011, when Seinfeld “allegedly mentioned to Charles that he was considering a talk show about ‘comedians driving in a car to a coffee place and just chatting.’” Charles then immediately reminded Seinfeld that this was originally his idea from back in 2002, and the two subsequently started working together on the project. According to Charles, Seinfeld was not very involved, and Charles was largely responsible for the creativity behind the script. A dispute over compensation arose in 2012 when Charles wanted to be paid on an ownership basis with backend royalties, but Seinfeld maintained that Charles would only be paid on a work-for-hire basis. Seinfeld was upset with Charles for wanting more than the directing fee, and called him “ungrateful.” Their disagreement led to a fallout of their relationship, and Charles had no further involvement in the series. The show premiered in July 2012 without crediting Charles, at which point his ownership claim was publicly repudiated. The court determined that either one of these developments was enough to place Charles on notice that his ownership claim was disputed, thereby triggering the running of the three-year statute of limitations.

The Copyright Act has a three-year statute of limitation to ensure any claims of ownership in a work are brought and adjudicated in a timely fashion. 17 U.S.C. § 507(b). The Second Circuit has previously held that when “ownership is the dispositive issue” in an infringement claim, and the “ownership claim is time-barred,” then the infringement claim itself is time-barred, even if there had been infringing activity in three years preceding the lawsuit. Kwan v. Schlein, 634 F.3d 224, 230 (2d Cir. 2011). Seinfeld argued that Charles was on notice when he was denied backend compensation in 2012, and the lower court agreed. The District Court held that a reasonably diligent plaintiff would have understood that Seinfeld had repudiated Charles’s claim of ownership, giving rise to the requisite knowledge to begin the running of the statute of limitations. Furthermore, Seinfeld went on to produce and distribute the show without giving any credit to Charles, which also should have put Charles on notice of the ownership dispute.

In May 2020, the Second Circuit agreed with the District Court’s “well-reasoned” dismissal of the suit. Based on the events in 2012, the three-year statute of limitations expired in 2015, rendering Charles’s 2018 lawsuit untimely.

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Drake Wins Big With Fair Use

Drake scored a big win as the Second Circuit affirmed his use of another work in one of his songs as “fair use.” Estate of Smith v. Graham, 799 F. App’x 36 (2d Cir. 2020). The original lawsuit alleged Drake violated a copyright by sampling a 1982 word recording, “Jimmy Smith Rap,” in his own song, “Pound Cake.”

In April 2014, the estate of Jimmy Smith filed suit against Drake, alleging infringement of the copyright of “Jimmy Smith Rap.” It is worthwhile to note that Drake had actually obtained a license to the sound recording, but not the composition. In 2017, the District Court ruled that the portion of “Jimmy Smith Rap” used in Drake’s song was fair use because Drake’s objective was “sharply different from the [original artist’s goals] in creating it.” Estate of Smith v. Cash Money Records, 253 F. Supp. 3d 737, 750 (S.D.N.Y. 2017).

In affirming the District Court, the Second Circuit considered four well known non-exclusive factors in determining the work constituted fair use. The statutory framework for analyzing fair use includes (1) the purpose and character of use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work. See 17 U.S.C. § 107; see also TCA Television Corp. v. McCollum, 839 F.3d 168, 179 (2d Cir. 2016).

The Court held that the first factor supported fair use because Drake’s use of the copyrighted material was transformative. A transformative work is one that uses copyrighted material for a purpose that differs from that for which it was created. TCA, 839 F.3d at 180. “Jimmy Smith Rap” was one about the greatness of jazz, and painted a negative view of all other types of music. It proposed that jazz would stand the test of time, where other types of music would not. Drake’s “Pound Cake,” however, sent the message that all music reigned supreme, regardless of genre. The Court held that while “Jimmy Smith Rap” promoted the elitism of jazz music, “Pound Cake” criticized it. Because the message Drake presented contrasted that of “Jimmy Smith Rap,” the Court held the copyrighted work was used for “a purpose, or imbue[d] it with a character, different from that for which it was created.” The Court found that because the work was transformative, the second factor supported fair use. With respect to the third factor, which looks at “whether the amount and substantiality of the portion used in relation to the copyrighted work as a whole are reasonable in relation to the purpose of the copying, the Court found the amount “Pound Cake” borrowed from “Jimmy Smith Rap” was reasonable because it was “necessary to emphasize its own message: that the ultimate attribute of music is its authenticity, not the production process that created it.” The Court also found the fourth factor in favor of fair use because “Pound Cake” did not negatively affect the market for “Jimmy Smith Rap” or decrease the demand for it in any way. The Court emphasized that “Pound Cake” was rap and hip-hop music, and “Jimmy Smith Rap” was by a jazz musician about jazz music, and therefore the two works targeted different audiences.

This is an interesting case for copyright infringements because most sample cases focus on recording rights, as opposed to musical or lyrical rights. Because Drake’s label already had a license to the recording rights and also because Drake sampled more than 35 seconds of the copyrighted track, the entire issue rested on fair use. Drake won big, especially since there has been disparity in what courts around the country consider “reasonable” in sampling-centric copyright infringement lawsuits.

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Tax Woes of the Cannabis Plant

The 16th Amendment to the U.S. Constitution provides that, “Congress shall have power to lay and collect taxes on incomes, from whatever source derived…”. According to § 162 of the Internal Revenue Code, businesses are generally allowed to deduct from their adjusted gross income the ordinary and necessary expenses they incur in carrying on their business. 26 U.S.C. § 162. One pesky provision in the Internal Revenue Code, § 280E, disallows these business expense deductions “if such trade or business (or the activities which comprise such trade or business) consists of trafficking in controlled substances (within the meaning of schedule I and II of the Controlled Substances Act) which is prohibited by Federal law or the law of any State in which such trade or business is conducted.” 26 U.S.C. § 280E. Because marijuana is still illegal at the federal level under the Controlled Substances Act, according to § 280E, businesses that are engaged in the growing, manufacturing, or sale of marijuana are not entitled to deduct their ordinary and necessary business expenses from their adjusted gross income under § 162.

According to The Wolters Kluwer Bouvier Law Dictionary, income may be defined as “Gain in wealth realized from one’s labor, property, commerce, or investment.” For any taxpayer, taxable income is equal to their gross income less the deductions they are entitled to. In order to lessen overall tax liability, and thus avoid higher rates of taxation, it is in the taxpayer’s best interest to utilize all available deductions. Deductions are available to taxpayers so that their taxable income more properly reflects their overall “gain in wealth”.

With the emergence of state-sanctioned marijuana businesses over the last 10 years, the application of § 280E has left many marijuana businesses with tax liabilities that do not accurately reflect the income, or “gain in wealth realized”, they are generating. Recently, a marijuana business, Harborside Health Center, which was hit with an $11 million tax liability by the U.S Tax Court, has challenged the constitutionality of § 280E, arguing that it violates the 16^th Amendment’s reliance on “income”. Patients Mut. Assistance Collective Corp. v. Commissioner, Nos. 29212-11, 30851-12, 14776-14, 2018 Tax Ct. Memo LEXIS 211 (T.C. Dec. 20, 2018). The business maintains that § 280E improperly categorizes all monies generated by the business as income rather than more appropriately distinguishing those monies from “gain in wealth realized”. Harborside Health Center’s appeal will be heard in the Ninth Circuit, but remains unscheduled to this point. Patients Mut. Assistance Collective Corp. v. Commissioner, 19-73078. Per the brief that has been submitted by the appellant, the premise of their argument is that, “[b]y blocking a marijuana business from taking any deductions related to their expenses, § 280E is improperly classifying all money that passes through the business as income”. The National Cannabis Industry Association and the Marijuana Industry Group have filed amicus briefs echoing the appellant’s 16^th Amendment challenge to § 280E.

In addition to attacking the constitutionality of § 280E as a whole, Harborside argues that its “cost of goods sold should include the costs of the staff and materials it uses to examine, process and package the marijuana flower, clones and edibles it buys from wholesalers and sells in its shop.” Since § 280E only applies to business deductions, cannabis businesses are still allowed to reduce taxable income by the costs associated with selling inventory. According to 26 CFR § 1.61-3, “In a manufacturing, merchandising, or mining business, “gross income” means the total sales, less the cost of goods sold”, where the cost of goods sold is not an expense, but rather an adjustment that impacts the total amount of taxable gross income. Harborside argues that it functions like a grocery store that makes prepared food and butchers meat before putting it out for sale. Grocery stores are free to claim the cost of preparing the goods for sale as part of their costs of goods sold, so Harborside should as well.

Harborside’s tax challenge is just one in a series of lawsuits and actions aimed at reducing § 280E’s detrimental impact on legitimate, licensed marijuana businesses. Recently, the United States Tax Court acknowledged that if a business has both legal and illegal components (expenditures in connection with the illegal sale of drugs within the meaning of § 280E), the business will be permitted to take § 162 deductions for just those business-related expenses that are not in violation of § 280E. In 2007, the Tax Court, in Californians Helping to Alleviate Med. Problems, Inc. v. Commissioner, 128 T.C. 173 (2007), held that a California marijuana dispensary which provides counseling and caregiving services in addition to selling marijuana was allowed to deduct expenses relating exclusively to the counseling and caregiving aspects of its business. The burden of distinguishing the expenses concerning marijuana-related activity from those that were related to the counseling and caregiving services fell on the dispensary taxpayer. Along those same lines, in Alterman v. Commissioner, No. 13666-14, 2018 Tax Ct. Memo LEXIS 83 (T.C. 2018), the Tax Court determined that when a marijuana business is unable to distinguish legal business-related expenses from those expenses relating to the illegal activity (those associated with the trafficking of marijuana), all business deductions will be disallowed.

Beyond the Tax Court, in Alpenglow Botanicals, LLC v. United States, 894 F.3d 1187 (10th Cir. 2018), the U.S. Court of Appeals for the Tenth Circuit ruled that the IRS has the authority to determine that a cannabis business is trafficking in a controlled substance for purposes of applying § 280E. The court stated that a criminal conviction is not a prerequisite for the IRS to apply § 280E and that the IRS has the authority to determine through an audit that a taxpayer is trafficking in a controlled substance. Furthermore, the court stated that §280E is not an unlawful penalty and disallowing a deduction is not a “punishment.” Critics condemned this decision on the grounds that it gives the IRS the power to investigate non-tax crimes for tax administration purposes and allows them to administratively determine that a crime has been committed. The plaintiff’s writ of certiorari was denied by the Supreme Court of the United States.

Cannabis businesses across the country anxiously await the Ninth Circuit’s upcoming ruling in Patients Mut. Assistance Collective Corp. v. Commissioner, 19-73078. For now, it remains obvious that as long as marijuana remains illegal under the Controlled Substances Act, § 280E will continue to act as a barrier to marijuana businesses realizing their deserved profit.

One of the most important things a cannabis enterprise can do is ensure it maintains accurate and factually detailed records of its business transactions and expenses. Making sure there are proper accounting methods in place to detail business operations and not trying to account for costs and expenses after-the-fact are all best practices. If the IRS chooses to request further documentation supporting the deductions a business claimed when filing its taxes, and the business is able to offer substantiated documentation for such claimed deductions, the court will be less likely to prohibit the deductions altogether. It is also important to structure the business in a way that clearly distinguishes the marijuana business from the non-marijuana business. Selling paraphernalia next to actual drug products—without any other activities—will probably not be enough for a company to deduct necessary and ordinary business expenses and subsequently claim that those expenses do not run afoul of § 280E’s prohibition on deductions for marijuana businesses. Proper planning and accounting are key.

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Booking Is Generic But Booking.Com Is A Registerable Trademark

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.

A trademark distinguishes one producer’s goods or services from another; a chief purpose of granting trademark recognition is to further the ability of consumers to distinguish among competing producers. See Park ‘N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 198 (1985). Among the conditions for registration, the mark must hold some level of distinctiveness; the more distinctive the mark, the more readily it qualifies for the principal register. A generic descriptive term is unregistrable if it signifies to the consumer only a broad class of goods or services rather than a specific one (i.e. coffee versus Starbucks, sport cars versus Lamborghini, luxury handbags versus Louis Vuitton). The Lanham Act, enacted in 1946, extended protection to descriptive terms; in order to be placed on the principal register, however, descriptive terms must achieve significance in the “minds of the public”. See Wal-mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 211 (2000). The public’s perception of a mark is a core principle of the Lanham Act; whether a term is considered generic depends on its meaning to consumers. Without a secondary meaning, generic descriptive terms may only be eligible for the supplemental register, which provides more modest benefits. Relying on this core principle, the Supreme Court found that if “Booking.com” was generic, consumers would understand other related services (i.e. Travelocity, Kayak, Expedia) to be a sub-species or sub-set of Booking.com, which is simply not the case.

The PTO maintained that when a generic term (i.e. booking) is combined with a generic top-level domain (i.e. “.com”), the resulting combination is inherently generic. The PTO urged that this exclusionary rule follows from a pre-Lanham Act common-law principle applied in Goodyear’s India Rubber Glove MFG. Co. v. Goodyear Rubber Co., 128 U.S. 598 (1888), holding that a corporate designation affixed to a generic term cannot confer trademark eligibility. The dissent joined in this argument, stating that “Generic.com” conveys that the generic good or service is offered online and nothing more. Writing for the majority, Justice Ginsburg refuted this argument, pointing to the PTO’s past practices in granting registrability of “art.com” and “dating.com”. If the PTO’s argument were successful, those existing “generic.com” trademarks would be at risk of cancellation. Relying on the reasoning in Goodyear, the Court pointed out that the PTO and the dissent disregarded a foundational principle of the Lanham Act, i.e. whether a term is generic depends on the meaning to consumers.

Additionally, the Court found it important that only one entity can occupy a particular Internet domain name at one time. Because of this, a consumer is likely to understand that any “generic.com” mark refers to a specific entity rather than a broad class of goods or services. This Internet real estate exclusivity sets the proposed marks apart from terms like “Wine, Inc.” and “The Wine Company”. For this reason, the Court resisted the PTO’s position that “generic.com” terms are only capable of signifying a class of goods and services and are incapable of identifying a single source provider, a requisite for trademark registrability.

Booking.com conceded that its mark is weak, and that federal registration of the term will not prevent competitors from using the word “booking” to describe their own services. That said, Booking.com can obtain federal registration of its “Booking.com” mark and will be afforded all of the trademark protections and perks that come with it. Good news for other “generic.com” marks. The Court’s decision, however, does not suggest that every generic term affixed to an Internet domain will be afforded the same protection. A company needs to advance a generic trademark term to the point where it is specifically and distinctively identifiable by the consuming public and serves to distinguish the company’s goods and services from those of its competitors to be entitled to federal trademark registration.

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