The U.S. Supreme Court heard oral arguments in U.S. Patent and Trademark Office v. Booking.com (No. 19-46), representing the first time the Supreme Court has heard arguments on the issue of generic trademarks since the enactment of the Lanham Act in 1946 (15 USC 1051).
As explained more fully in a Cadwalader memorandum, the case presented the question of "whether the addition by an online business of a generic top-level domain ('.com') to an otherwise generic term can create a protectable trademark." Generic terms cannot be registered as trademarks, while descriptive terms (i.e., those that describe features or characteristics of those goods or services) may be registered if they acquire a secondary meaning. There was no dispute that "booking," when used with respect to booking services, was a generic term; the dispute revolved around whether the combined term "BOOKING.COM" was necessarily generic as well.
The U.S. Patent and Trademark Office argued that the addition of a top-level domain such as .com or .org to a generic mark would necessarily result in a generic term. This argument was based on a decision from the 19th century in which the Supreme Court found that the addition of the word "Company" to a generic term resulted in a generic term. The Justices expressed skepticism as to the application of the proposed categorical rule to the modern-day internet.
On the other side of the issue, the Justices questioned whether trademark rights were necessary at all to protect Booking.com's investment in its URL. When pressed as to why Booking.com needed a trademark registration despite acknowledging that the mark was "weak" at best, the arguing attorney noted that certain relief was available in the Lanham Act only for registered marks, such as to prevent outright counterfeiting or to seize URLs.
Chief Justice Roberts challenged the government as to why they should rely on the 19th-century case instead of the express language of the Lanham Act, noting that the Lanham Act itself identified a "primary significance" test that should be used for determining questions of genericness. Both Justices Kagan and Gorsuch probed the government attorney as to how the Court should rule if it rejected the categorical rule, possibly hinting as to their current thoughts on the matter.
This case also represented the first time in its 231-year history through a telephone conference call. The non-visual nature of the telephone conference necessitated procedural changes as to how the Justices and arguing attorneys could interact, requiring additional oversight by Chief Justice Roberts. The unique nature of the proceedings led to a structured format in which the Justices spoke in order of seniority, with Chief Justice Roberts asking his questions first and thereafter acting essentially as a panel moderator. The Chief Justice appeared to decide for his fellow Justices when the arguing attorney should be cut off, carefully managing the time for the entire group of lawyers and Justices.
As with many of the changes implemented by the Judicial branch to adapt to the COVID-19 pandemic, oral arguments presented over conference calls will create both problems and opportunities. Given the indefiniteness of the COVID-19 pandemic, this oral argument will likely serve as a model and prototype for future oral arguments conducted telephonically, including a number of cases to be heard before the Supreme Court over the next week.
Originally published 5 May 2020
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