The U.S. Supreme Court kicked off a round of remote oral arguments Monday with an intellectual property case over the ability to register trademarks for generic terms that have a top-level domain added.
In the court’s first-ever live audio broadcast, the justices took turns asking questions in order of seniority, with Chief Justice John Roberts taking the first turn, instead of the court’s usual free-for-all style of questioning.
Case law and the Lanham Act have prevented trademarking everyday terms. But now before the Supreme Court in U.S. Patent and Trademark Office v. Booking.com is whether adding a top-level domain such as “.com” can make an otherwise generic term eligible for protection.
A precedent from 1888, involving two rubber companies that used “Goodyear” in their names, took center stage in the government’s presentation. The argument made by Erica Ross, assistant to the U.S. Solicitor General, on behalf of the Patent and Trademark Office, was straightforward: Just as the Goodyear precedent said a brand owner couldn’t trademark a generic term that has “Company” or “Inc.” tacked on, the rule should extend to generic domains like “.com”.
But a handful of the court’s conservative justices wondered aloud whether the Goodyear precedent still applies. The possibility didn’t seem to hinge on whether another case or the Lanham Act have overturned the precedent but rather whether it just doesn’t apply anymore in the age of the Internet.
“What do you think I should do if I think that Goodyear is a case from a different era and doesn’t control here but also think that the Lanham Act similarly was enacted in a different era, namely in the pre-Internet era, and the case law on which Ms. Blatt relies belongs to that era?” asked Justice Samuel Alito. “How can a rule that makes sense in the Internet age be reconciled with the language of the Lanham Act?”
When Justice Ruth Bader Ginsburg took her turn, she focused on the trademarks that might be canceled because of the Supreme Court ruling in the USPTO’s favor.
“How many already registered marks would be subject to cancellation? I take it there are dozens of ‘.coms’ that have been registered,” she asked, later adding, “If we rule in your favor, would the PTO itself endeavor to cancel these marks?”
Ross answered she doesn’t believe a decision against Booking.com would cause a sea change, because the Trademark Trial and Appeal Board and examiners have consistently treated generic terms with domains added as not protectable by trademark.
“By and large, our rule is being followed out in the world, so I don’t think there is going to be this huge change,” she said.
Key to Booking.com’s argument is survey evidence indicating consumers tend to associate the name with the specific company, rather than generic travel booking services. In the trademark sphere, establishing that type of consumer association is called the “primary significance test” to figure out if a term is generic or distinctive enough to protect.
Lisa Blatt, who argued for Booking.com, said she wasn’t trying to argue survey evidence totally settles the question of genericness. Ginsburg asked her when a generic term with a domain would fail the primary significance test.
Blatt said it’s possible for consumers to think of generic words that have domains generically. She said it’s necessary to look at a whole body of evidence about consumer use of a word, such as surveys, trade journals and newspaper articles.
“I have searched every ‘grocerystore.com’ looking for toilet paper; I have now started looking at every hardware.com,” she said. “Those are generic usages of a ‘genericword.com.'”
Alito pressed Blatt on a point Justices Stephen Breyer and Sonia Sotomayor shared: Would Booking.com get an unfair advantage on top of already owning its domain because companies that predated the Internet couldn’t register a name such as Booking Company or Booking, Inc.?
“You are seeking a degree of monopoly power that nobody could have had prior to the internet age,” he said.
Blatt responded she doesn’t believe that companies owning domain names for generic words, such as Weather.com or Law.com, have crowded out other brand owners from using those words in their own names.
“There are so many Law.com variations that are registered and not suing each other, and no one’s complaining,” she said. “The fact that they don’t have any anti-competitive harm seems to be telling that you wouldn’t want to write an opinion destroying the billions of dollars that’s been built up in not just ‘.com’ marks, but in company marks.”