“Several of the Justices expressed concerns that granting trademark protection for BOOKING.COM would create a monopoly power, rather than an advantage based on a commercial identification that the trademark law is intended to provide.”
The U.S. Supreme Court heard oral arguments in United States Patent and Trademark Office, et al., v. Booking.com B.V., (Case No. 19-46) yesterday, in the High Court’s first ever telephonic hearing. The United States Patent and Trademark Office (USPTO) urged the Supreme Court to reverse a judgment of the U.S. Court of Appeals for the Fourth Circuit that held BOOKING.COM to be a registrable trademark. The Respondent, Booking.com, argued that the primary significance test, rather than the Federal Circuit’s precedent in Goodyear Co. v. Goodyear Rubber Co., holds the answer to the question of how to distinguish between descriptive and generic names, and under the primary significance test, BOOKING.COM is a registerable trademark.
USPTO: the Court Should Follow Goodyear
Arguing on behalf of the USPTO was Erica L. Ross, Assistant to the Solicitor General, Department of Justice. Ross began by explaining that the term “booking” is generic and, under Goodyear, the addition of entity designations such as “Company” or “Inc.” does not create a protectable mark. Ross further explained that the addition of “.com” is similar to the addition of an entity designation and, therefore, should not be eligible for federal trademark registration. Noting that it is a unique feature of the internet that only one entity can use a particular domain name, Ross noted that affording additional protection in the form of trademark registration would effectively give Booking.com a monopoly.
Chief Justice Roberts noted that Ross focused on the 130-year old Goodyear case without mention of the trademark statute, which states that “the primary significance of the mark to the public shall be the test for determining whether a mark has become generic.” Roberts also noted that if BOOKING.COM was generic, it would describe a category of goods or services. However, Roberts explained, that is not the case here, as nobody refers to other companies in the same category, such as Travelocity or Priceline, as “Booking.coms.” Thus, Roberts concluded, BOOKING.COM is not a generic term to describe a type of service. Ross responded by agreeing that that term “generic” may refer to a particular class of goods, but noted that it can also be used to refer, as in Goodyear, to a specific entity or how the public would understand a particular term.
Justice Thomas broke his usual vow of silence to pose the question of whether Booking could acquire a registered mark for an 800 number, i.e. 1-800-Booking, and noted that BOOKING.COM seems to be more analogous to 1-800 numbers than the terms “company” or “Inc.” since both .com’s and 1-800 numbers are individualized. Ross responded that, while “sort of debatable under Goodyear”, 800 numbers are eligible to be registered based on Federal Circuit precedent. Ross also noted that the usual intent of a trademark registrant is to exclude others from using the same name, but the nature of the internet already accomplishes that goal.
Justice Ginsburg and Justice Breyer further questioned Ross on the distinction between phone numbers and domain names. Breyer additionally questioned the difference between a trademark that is an address and a “.com”. Ross responded to Ginsburg by explaining that “BOOKING.COM can be encapsulated in longer domain names … in a way that 1-800-booking or booking itself really couldn’t be in longer phone numbers…[thus, there’s] sort of a de facto reason why the same competitive risks aren’t there.” In response to Breyer, Ross noted that a trademark to a street address is fundamentally different from a “.com” because an address does not tell you anything about the service and a registrant would still have to work to build up its brand. In contrast, Ross explained, a “.com” registrant would have the up-front brand recognition that goes with a website.
Justices Alito, Sotomayor, Kagan, Gorsuch and Kavanaugh also weighed in with questions relating to the primary significance test, the adoption of a categorical rule, and why the existing doctrinal tools under the Lanham Act are not sufficient. Ross responded to those and other questions by arguing that the USPTO is asking the Court to follow Goodyear and hold that “generic company terms ‘without further specification’ [are not] enough to get trademark protection.” Ross also noted that if a categorical rule could not be adopted, the USPTO would want “at the bare minimum, the risk of confusion analysis on the back end to be extremely sensitive to the fact that what’s driving the intuition is the uniqueness of the domain name.”
Booking.com: Primary Significance Test Prevails
Lisa S. Blatt of Williams & Connolly argued on behalf of Booking.com. Blatt presented three reasons why the Court should hold that the primary significance test is the correct method for distinguishing between descriptive names, which the Lanham Act protects, and generic names that are not protected: 1) The Lanham Act mandates the primary significance test; 2) the Lanham Act abrogated Goodyear; and 3) the primary significance test furthers the statutory purpose to let consumers decide which marks deserve trademark protection.
Chief Justice Roberts noted that the primary significance test is in a portion of the statute that deals with cancellations, rather than registrations. But Blatt argued that it is Booking.com’s position that, although Congress “codified the primary significance test in Section 1064 to overrule a decision departing from [the primary significance] test in the cancellation context,” Section 1064 actually “reflects Congress’s ratification of the primary significance test to define a generic name in all contexts. The government has no other test for the dividing line other than primary significance.”
In response to a comment by Roberts that Congress may have appreciated the significance of Goodyear with respect to the registration of marks, Blatt noted that Goodyear did not distinguish between generic and descriptive marks, but rather held that both were off limits.
Justice Thomas also questioned Blatt’s reliance on the primary significance test. Blatt noted that the primary significance test is not necessary for Booking.com to prevail because there cannot be a per se rule that ignores what consumers think. Further, Blatt stated that “it just so happens that every court has always said the primary significance test governs.”
The remaining Justices also presented questions, including why unfair competition law is insufficient to provide adequate protection, whether survey evidence is ever dispositive, and when would a “.com” win a trademark suit. Blatt noted that Booking.com is seeking trademark protection because it should be entitled to the same competitive rights that any other travel agency has to trademark registration. Blatt further noted that trademark protection is important because it would allow Booking.com to defend itself against cyber scams, such as spoofing and typosquatting. With respect to survey evidence, Blatt explained that survey evidence is never dispositive and all relevant evidence regarding consumer usages must be considered. Blatt also responded to the question regarding whether a “.com” could win a trademark suit by stating, “I haven’t seen any.” However, Blatt reiterated the reasons why “.com” entities would seek cyber protection- to protect against counterfeiting and cyber scams.
Several of the Justices expressed concerns that granting trademark protection for BOOKING.COM would create a monopoly power, rather than an advantage based on a commercial identification that the trademark law is intended to provide. For example, Justice Alito said:
You are seeking a degree of monopoly power that nobody could have had prior to the Internet age. I take it a company could not have registered ‘booking company,’ but because of the Internet, you have Booking.com, which gives you an advantage over other companies that are in that business. And now you want to get even more advantage by getting trademark protection for that.
As explained by Justice Gorsuch, and confirmed by Blatt, it is Booking.com’s position that “the government’s concerns about the competitive advantage are minimized or mitigated by the fact that marks like Booking.com are relatively weak because you’re putting together two generic terms.”
Mitchell Stein of Sullivan & Worcester made the following observations of the oral argument. “First, the Court will not be wed to its precedent in Goodyear if it concludes that Goodyear does not find support in the Lanham Act,” Stein said. “As this Court has demonstrated a number of times (including its recent Romag Fasteners trademark decision), in order to untangle ambiguities in the law, the Court first looks to the language of the statute. Second, if the Court is going to uphold registration of Booking.com’s trademark, it is going to have to overcome concerns expressed by the majority of justices regarding the potential monopolistic advantages that may accrue to Booking.com and others in permitting ‘generic.com’ marks to register.”
Fara Sunderji of Dorsey & Whitney said that, “Reading the tea leaves, the tougher questions were on the USPTO’s side, but it remains to be seen whether the Supreme Court will grant Booking.com with trademark rights it has long sought.”
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