A Contemporary Look at Genericism: USPTO v. Booking.com

Post Authored by Stephanie Nikitenko

On May 4, 2020, the Supreme Court not only had its very first telephonic oral arguments but also live-streamed the arguments on television and the Internet for USPTO v. Booking.com BV. Because oral arguments at the Supreme Court had never before taken place digitally, there were numerous concerns even outside the possibility of technological mishaps. There was concern over whether the justices would still have their usual back and forth on the bench, how smoothly the justices would be able to interrupt and ask counsel questions, and how the attorneys would fare without being able to use visual cues from the justices. However, the oral arguments went smoothly. The justices took turns asking counsel questions in order of seniority. Chief Justice Roberts would sometimes interrupt to ensure the arguments stayed within the allotted time.

The question at issue in USPTO v. Booking.com BV case was whether around adding “.com” to a generic term created a protectable trademark. Dkt. No. 19-46. The USPTO’s main argument was framed by Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co. 128 U.S. 598 (1888) (“Goodyear”). Specifically, the USPTO argued that

[Its] rule flows directly from Goodyear. “.com” is simply the on-line version of “company,” and it tells you only that Respondent operates a commercial website via the Internet where bookings can be made. We think it’s consistent with the Lanham Act’s preservation of this distinction between generic and descriptive terms and with long-standing trademark policy. Respondent’s rule, by contrast, would require overturning Goodyear, blurring the Lanham Act’s line between generic and descriptive marks, and permitting the monopolization of generic terms on-line.” [1]

However, Booking.com thought the primary significance test should apply. Specifically, the primary significance test holds that a mark is classified as generic if it primarily refers to the identity of the product itself and not to the producer or product source. Booking.com argued three reasons why the Court should adopt the primary significance test: “First, the [Lanham] Act mandates this test. Second, the [Lanham] Act abrogated Goodyear. And, third, this test furthers the statutory purpose to let consumers decide which marks deserve trademark protection.” [2]

The USPTO also relied on Goodyear case to support its point that if there is a generic term, then a trademark cannot be obtained if the mark is just the generic term and “.com”; in other words, consumer perception should not be a factor. [3] Notably, the justices asked the USPTO whether Goodyear, a case decided in the 19th century, could be reconciled with the Lanham Act, which currently governs trademark law. [4] Chief Justice Roberts said that when deciding Congress’ intent, “it makes more sense to follow the language that Congress chose in the statute rather a 130-year-old case.” [5] Justice Thomas added that because each domain name is unique, they are more similar to 1-800 vanity numbers, which are also individualized and registrable under trademark law.

But one of Justice Ginsburg’s questions to the USPTO summed up the issues in the case. Specifically, “[i]f [the USPTO is] right that .com doesn’t make a generic term non-generic, how many marks, already registered marks, would be subject to cancellation?” [6] Booking.com jumped on this question by arguing that the USPTO’s position would threaten numerous existing trademarks with generic word combinations. [7] The justices were also concerned about monopolization. If Booking.com becomes a trademark, could Booking.com enforce its rights against any domain name with the word “booking” in it, such as ebooking.com? In response to that question, Booking.com explained that it had no intention of becoming litigious with their name. However, it wanted the trademark registration in order to fend off fraud and infringement.

While a decision has not yet been made, the parties have already booked their place in history by being the very first to telephonically argue at the Supreme Court.

 

[1] Transcript of Oral Argument at 37, United States Patent and Trademark Office v. Booking.com BV (2020) (No. 19-46).

[2] Transcript of Oral Argument at 38, United States Patent and Trademark Office v. Booking.com BV (2020) (No. 19-46).

[3] SCOTUS Blog, Debrief: United States Patent and Trademark Office v. Booking.com, Youtube (May 5, 2020), https://www.youtube.com/watch?v=q-7LXWJXd9E.

[4] Blake Brittain, Justices Talk Monopolies, Generic Marks in Booking.com Case, Bloomberg law (May 2020), https://news.bloomberglaw.com/ip-law/justices-express-monopoly-concerns-in-booking-com-trademark-case.

[5] Transcript of Oral Argument at 6, United States Patent and Trademark Office v. Booking.com BV (2020) (No. 19-46).

[6] Transcript of Oral Argument at 12-13, United States Patent and Trademark Office v. Booking.com BV (2020) (No. 19-46).

[7] Brittain, supra note 4.

About the Author:

stephanieStephanie Nikitenko is a recent graduate of UIC John Marshall Law School. At John Marshall, she served as the President of the Intellectual Property Law Society (IPLS) and a staff editor on the Review of Intellectual Property Law (RIPL). She focused her studies primarily in Intellectual Property, and is currently seeking employment in this area. Additionally, under the supervision of an attorney, she assists a law firm with both their trademark and patent matters.

 

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