Originally published May 6, 2020
The Supreme Court heard oral argument via teleconference in United States Patent and Trademark Office v. Booking.com B.V. on Monday, the Court's first oral argument since it closed its doors in March in response to the COVID-19 outbreak.
Chief Justice Roberts acted as a sort of "moderator" to keep the arguments moving at a brisk pace as each justice asked questions in order of seniority. Strikingly, Justice Thomas, who rarely asks questions during oral argument, participated in questioning.
Justice Thomas asked a line of questions about distinguishing the BOOKING.COM trademark from those discussed in the precedent relied on by the USPTO, namely the Supreme Court's 130-year old Goodyear Rubber Manufacturing Co. decision. In that case, the Supreme Court held that merely adding "Company" or "Inc." to a generic term (such as "Wine Company") would not create a protectable trademark. The USPTO argued that the holding in Goodyear created a per se rule that purported marks consisting of merely generic terms are not protectable. Thomas pointed out that the current case involved adding an "individualized" element that can be owned uniquely by one entity, such as ".com" or "1-800," which seemed to cast doubt on whether the old Goodyear rule should apply.
Indeed, several other justices cast doubt on whether the Goodyear holding was sustainable in the internet age, or even whether it had been abrogated in the 1940's by the Lanham Act's "primary significance" test. For example, emphasizing the importance of the Lanham Act's language over the Goodyear holding, Chief Justice Roberts reasoned that "it makes more sense to follow the language that Congress chose in the statute rather than a 130-year-old case of ours."
Similarly, Justice Alito noted that Goodyear seemed to be a product of a different era and may have limited application since the advent of the internet. Justice Kagan suggested that in place of a categorical rule, perhaps there should be a rule that complements the USPTO's current examination guidelines indicating that generic terms plus gTLD endings would "typically" not be protectable—allowing trademark protection when the domain name's primary significance to the public is a trademark rather than a generic term. Indeed, both Justices Kagan and Gorsuch urged the USPTO to offer guidance on how the Court might craft a test that avoided a categorical rule against registering combinations of generic terms.
The justices also had practical questions about Booking.com's suggestion that the "primary significance" test should govern genericness determinations in the USPTO. Although the Lanham Act indicates that genericness should be judged by the primary significance of the mark to the relevant public, this test is set forth only in the context of cancelling registrations for marks that have become generic (such as "aspirin" and "escalator"). Justice Sotomayor questioned how a "primary significance" rule would be applied during examination. Would applicants need a survey? Would documentary evidence be enough? Would it simply invite a flood of litigation?
A major concern of the USPTO was anti-competitive monopolization of domain name endings, precluding similar marks that competitors may have every right to use, a concern that many of the justices seemed to share. To address this concern, Booking.com relied heavily on the argument that the weakness of generics-based combinations would make it difficult to prove that two similar generic combinations would cause a likelihood of consumer confusion, giving the example that "weather.com" and "accuweather.com" do not cause consumer confusion. In essence, Booking.com conceded that its mark (and similar marks) may be so weak that a registration could only be enforced against identical (or nearly identical) marks. In the context of an individualized domain name ownership system, this raises the question of whether such marks need to be registered with the USPTO at all.
Indeed, Justice Ginsburg asked whether Booking.com could simply rely on unfair competition law to prevent passing off and other attempts to confuse consumers. In response, Booking.com pointed out that the source of much domain name piracy occurs overseas. In order to take advantage of the In-Rem jurisdiction elements of the federal anti-cyberpiracy law, Booking.com would need to have a federal trademark registration. Otherwise, the foreign cyber-pirate is beyond the reach of U.S. courts. This jurisdictional advantage would be a significant weapon for generics-based domain name owners facing piracy problems.
Ultimately, from the tone of the questioning, particularly the numerous attempts to distinguish Goodyear, the justices indicated that they are likely to rule in favor of Booking.com, or at the very least, reject the USPTO's proposed bright-line rule against generic.com marks. But the balance the Court ultimately strikes between the bright-line Goodyear test and the Lanham Act's primary significance test remains to be seen.
The case is United States Patent and Trademark Office v. Booking.com B.V., Docket No. 19-46 (Argued May 4, 2020).
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