By Kristin Hardy, Taft Stettinius & Hollister LLP
On May 4, 2020, the Supreme Court of the United States heard oral arguments in United States Patent and Trademark Office, et. al., v. Booking.com B.V., (Case No. 19-46) in the first-ever virtual hearing on the intersection of trademark law and domain names. The pivotal question of this case was ripe for review given the Circuit splits on whether top-level domain names—such as “.com”—transform a generic term like BOOKING into a non-generic, registrable trademark.
The USPTO relied on the century-old case Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., on the concept that merely adding “Inc.” or “LLC” to a generic term does not transform a generic term into a registrable trademark. Logic would follow here that, similar to an entity designation, a top-level domain name like “.com” merely indicates some connection with an online interface without any source-indicating capacity. A main concern is that by allowing “.com” to transform a generic term into a registrable one would effectively approve a monopoly power over generic terms and result in anti-competitive effects.
Skepticism was heard from Chief Justice Roberts noting that in focusing on the Goodyear case, the USPTO failed to mention the trademark statute which was codified after the Goodyear case. Specifically, the USPTO failed to mention the primary significance test that relies on the primary significance of a trademark to the relevant public as the test for determining whether the mark is descriptive or generic. The rationale on using this method is grounded in the fundamentals of trademark law—preventing consumer confusion. From the public perspective, it can be argued that BOOKING.COM is not generic because when arranging for travel accommodations the public does not refer to other travel accommodation sites or businesses like hotels.com or trivago.com as booking.com. There is only one booking.com.
To further bolster its argument in support of the primary significance test, Booking.com relied heavily on favorable survey evidence which showed that of the 400 survey respondents, approximately 74% identified BOOKING.COM as a brand name. Though supportive of Booking.com’s stance, this evidence is not dispositive. The USPTO, on the other hand, argued that this survey evidence should not even be considered as that evidence is irrelevant if the terms at issue are generic.
There was no tipping of the hat in which way the High Court will rule. We can likely expect a decision to be handed down in the coming weeks. For more on coverage of the case, click here for the SCOTUS blog.
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