law – Dickinson Law's Inside Entrepreneurship Law Blog

By: Lauren Stahl

Do you ever wonder how you will manage it all? It all might look different for each of us. Studying law. Teaching law. Practicing law. Having a family. Living a healthy life. Engaging in activities that fulfill you. Keeping your sanity. Just add being an entrepreneur to the mix.

Juggling all of the responsibilities that life brings can be stressful. But at the same time, juggling is simply a part of life. A daunting task, sure. But one that Professor Anderson manages to do as an entrepreneur, law professor, and family man.

A Traditional Path

Professor Anderson was a 2000 graduate of the New York School of Law. After graduation, Professor Anderson took a stroll down “traditional” law student lane and was associated with Sullivan & Cromwell LLP until 2003. His practice focused on mergers and acquisitions and financial institutions regulation, which is not exactly where he saw himself. Professor Anderson went on to receive his PhD in Political Science at Stanford University in 2008. Since then, his thirst for knowledge and innovation has continued as a Professor of Law at Pepperdine University Caruso School of Law, researcher, and entrepreneur.

Entrepreneurship as a Side Hustle

Professor by day and entrepreneur by night. Well, not exactly. Professor Anderson does not have a set schedule for creativity. Professorship is not your typical 9-5 job that only leaves time for entrepreneurial endeavors in the evening hours. Flexibility is key because there is no telling when an entrepreneur will have an innovative idea.

Academia creates the flexibility Professor Anderson needs as an entrepreneur and family man. There are days when he works 24 hours a day and days where he does not work at all. There are days where he is grading exams or preparing for class. And there are days when he is focused on ScholarSift—analyzing data, engaging in customer service, or connecting with clientele. There are also days where he has the flexibility to attend a mid-morning school meeting for his children. Creating, teaching, and family. All important. All his worlds. And he knows, most importantly, how to prioritize in the face of life’s demands.

You Sift, We Sift – ScholarSift

Legal technology is his arena. Alongside business partner, Trent Wenzel, Professor Anderson co-founded an analytics technology for transactional drafting. They sold this technological tool—now known as Draft Analyzer—to Bloomberg Law. This tool is now a prominent analytics feature of Bloomberg Law. But they did not stop there.

The duo continued to explore and create technological tools that address the needs of the legal field. Their current endeavor, ScholarSift, is designed for law students, professors and scholars. Though the customer base may be small, Professor Anderson created ScholarSift to solve problems specifically in the realm of legal research.

For authors, ScholarSift provides an analysis of a draft with strengths and weaknesses, automatic search for the most on-point literature, and automated citation formatting. For law reviews, ScholarSift automatically sorts through hundreds of thousands of papers to find the most promising submissions, instantly identifies possible preemption, and automates citation formatting. What more could we want?

Professor Anderson explained why he created this platform. He noted that there are legal information systems designed for lawyers with paying clients. There are technology solutions designed around learning (e.g., studying for the bar exam). But there is not much designed for legal research. This is where ScholarSift steps in to assist authors (such as professors, legal scholars, and law students writing seminar papers) and law reviews, among others.

separate but Equal Worlds

Professor Anderson is not one to impose his entrepreneurial interests on his students. Even though his entrepreneurial work is an obvious source of interesting material for exam fact patterns, his worlds often remain separate.

He lives to create. Finding creative solutions to problems motivates him. He seizes every opportunity to learn new things. This even includes things like reforesting. Professor Anderson is currently reforesting his property in northern California after the Creek Fire destroyed his land. As we speak, he is waiting for the trees to grow. He even has a small timber business that sells Christmas trees. His entrepreneurial mind never sleeps. While his worlds often remain separate, his passion for creating connects them all.

success: Having a Choice

As an entrepreneur, Professor Anderson makes sacrifices. His mind often drifts into entrepreneurial mode, which can be hard to turn off. At the same time, he feels privileged to have the flexibility in his schedule to pursue his interests. All of them. The work he engages in is not forced upon him; he chooses his work. He can spend his time creating and focusing on projects that are rewarding to him and that is what he appreciates most.

Observe First, Create Second

Professor Anderson provided a piece of advice to budding entrepreneurs that I was not expecting. His advice stems from his personal experience with entrepreneurship. He encourages students to pursue traditional paths after law school, or at least not to fear a legal career. He spoke about how the practice of law is extremely inefficient. He believes there is an extreme gap in access to justice that technology has the potential to solve.

Thus, Professor Anderson believes that there are huge opportunities to create businesses around the law. He encourages students to take those traditional jobs where they will have the opportunity to observe what lawyers do and the problems that lawyers face. This observation may lead to a host of innovative entrepreneurial ideas. Those ideas may be related to law or adjacent to law but students will only see these problems by first being lawyers. Be observant, intentional, and take time to step back and survey the efficiency (or lack thereof) in the legal field. You never know what you might come up with.

Social Media

Professor Anderson’s Twitter: @ProfRobAnderson

ScholarSift’s Twitter: @ScholarSift

Lauren Stahl, at the time of this post, is a rising 2L at Penn State Dickinson Law. Formerly a medical researcher at the National Institutes of Health and Penn State College of Medicine, Lauren has interests in health care law and business transactional law. Lauren currently serves as Secretary of the Health Law Society, Philanthropy Chair of the Women’s Law Caucus, and a Research Assistant for Professor Prince.

By: Jeremy Ulm

While the Supreme Court has made many important and eye-catching decisions in this session, the Court’s ruling in United States Patent and Trademark Office v. Booking.com B. V. may be one of the most impactful for entrepreneurs and small businesses. The Court held that domain names using a generic mark followed by a top-level domain indicator (.com, .org, etc.) may qualify for trademark protection. This ruling opposes the USPTO’s stance, and the accepted trademark law convention, that the addition of a top-level domain indicator does not alter the distinctiveness of a mark.

What is a generic trademark?

One of the requirements for trademark protection under the Lanham Act (the statute that governs modern-day trademark law) is that the mark must be distinctive. Distinctive marks identify the specific source of the product, while generic marks merely identify the type of product. Consider the difference between a unique and distinctive mark such as “Apple Computers” and a generic mark such as “Computers.” A generic mark cannot receive trademark protection, creating a high level of importance for the classification of a mark. In the Booking.com case, both parties acknowledged that the term “booking” on its own is generic, as it merely identifies the type of services provided. This leaves the question of whether a mark is still generic when the .com indicator is attached.

what does the .com indicator actually communicate to consumers?

Prior to the Booking.com ruling, the .com indicator did not affect the distinctiveness, and therefore the protectability, of a mark. Even before Congress passed the Lanham Act (the statute that governs modern-day trademark law), the Supreme Court had held that the addition of a business designation (Inc., company, etc.) to the end of a mark did not impact the mark’s ability to indicate the product’s source. Similarly, the .com indicator, abbreviating “commercial”, had been accepted to not change the distinctiveness of a mark.

While that is all well and good in a theoretical or academic setting, trademark law has evolved to incorporate a practical element of consumer understanding. For an average consumer, a domain name can be much more than the letter that they type into their computer. The domain name tells consumers where they are on the internet, and who controls the space that they have entered. When a consumer goes to “generic.com”, they would not expect to be taken to a website offering goods from all producers of the generic class of goods. They would expect to be taken to the website of a specific producer of that class of goods because they know that only one entity can own and control that domain name.

domain names vs. trademarks

Generally speaking, what separates trademarks from mere words and descriptions is how the words are used.

If the words are being used to indicate the source of a good or service, then it is being used as a trademark. This principle applies to domain names as well. A domain name may be used to tell you the owner or source of the website that you are visiting, or it may just serve as the digital address of that website. What separates Booking.com from many other “generic.com” websites is the incorporation of the .com indicator into their branding (see image above). In advertisements, the company is consistent with using the entire Booking.com name and even incorporates the .com indicator into its slogan, “booking dot yeah.” This helps them separate Booking.com from other hotel booking websites, and ultimately created the consumer impression that led to their Supreme Court victory.

what did the court really change?

It is unclear how the Court’s decision will impact the USPTO’s policies on granting trademarks to “generic.com” applicants. The Court made it clear that they weren’t telling the USPTO that all “generic.com” domain names are now deserving of protection, just that there is the possibility that consumers may come to associate “generic.com” with a specific brand to the point that it deserves protection. Keep in mind, however, that the Supreme Court gave the USPTO flexibility in how they determine which “generic.com” marks make it over that hurdle. In a footnote, Justice Ginsburg even mentions that dictionary definitions and the plain understanding of the mark may determine its status, which does not differ from the USPTO’s logic in classifying “generic.com” marks as generic up to this point.

what does this mean for your business?

Unfortunately, it is too soon to give a concrete answer to that question. The Supreme Court has opened the door for the protection of “generic.com” domain names, but that doesn’t necessarily mean you can just walk on in. There are however practical considerations to be made in the aftermath of this case.

if a competitor trademarks “generic.com”

Fair use still applies. Booking.com may have a trademark on that name, but that doesn’t mean that you can’t still use the term “booking” to describe the services that your website offers.
Trademark infringement still requires a likelihood of consumer confusion. Even if you use “booking” in your domain name, there are ways to separate yourself from the trademark of Booking.com.
Generic.com is still a weak mark. Consumers are much less likely to see the use of a generic term within a domain name and immediately associate it with the trademark holder. Ebooking.com and Booking.com are sufficiently different to avoid confusion, given the generic and necessary nature of the word “booking.”

if You own the “generic.com” domain name

Now is your chance to protect that domain name with a trademark. While the rights to a domain name on their own are substantial, additional protection of your intellectual property is always preferable. Keep in mind that getting the trademark is still far from a guarantee and that you will have to show what makes your “generic.com” more than just a generic .com.
Build your brand around the .com indicator. A travel company named “Booking” would have no chance of trademarking that name as it is clearly generic in the field. By building their brand around the name “Booking.com” as a whole, their business has found a way to transform their generic mark into a protectable trademark. You may be able to as well, but only if you put in the work to make your domain name its own brand.

Jeremy Ulm, at the time of this post, is a rising third-year student at Penn State Dickinson Law. He is pursuing an Entrepreneurship Law Certificate with a Transactional Concentration. He is also a Comments Editor for the Dickinson Law Review. To contact him, send emails to Jgu2@psu.edu

Sources

United States PTO v. Booking.com B.V., 2020 WL 3518365 (2020).

Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U. S. 598 (1888).

7:17.50.Internet domain names, 1 McCarthy on Trademarks and Unfair Competition § 7:17.50 (5th ed.).
25A:11.The nature of internet domain names, 5 McCarthy on Trademarks and Unfair Competition § 25A:11 (5th ed.).

Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4 (2d Cir. 1976).

Tag: law

Robert Anderson | Entrepreneur of the Month | July 2021