Patent and Trademark Office v. Booking.com B.V. (19-46)

argument 19-46

Patent and Trademark Office v. Booking.com B.V.

Supreme Court of the United States 1h 15m 9 speakers 8 chapters transcribed 6 days ago official recording ↗

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What is the fundamental trademark principle the Court is applying to the term “booking.com”?

John G. Roberts 0:00

We'll hear argument this morning in case nineteen forty six, United States Patent and Trademark Office versus Booking dot com. Ms. Ross?

Unknown 0:12

Mr Chief Justice, and may it please the court. It is a fundamental principle of trademark law that no party can obtain a trademark for a generic term like wine, cotton, or green. As Judge Friendly explained, and as the Lanham Act confirmed, A generic term is never entitled to trademark protection, no matter how much money and effort the user has poured into promoting the sale of its merchandise and what success it has achieved in securing public identification. In other words, secondary meaning or acquired distinctiveness is simply irrelevant to generic terms. That principle controls here. It is undisputed that booking is generic for the hotel reservation services respondents provides. Respondent thus could not federally register bookings.

Unknown 0:57

Nor could respondent register booking company or booking inc. In Goodyear, this court held that the mere addition of an entity designation like company or Inc. to an unprotectable term does not create a protectable mark. That is because those terms indicate only that parties have formed an association or partnership to deal in the relevant goods. By prohibiting a first adopter from obtaining a trademark in a phrase like booking ink, Goodyear ensured that no party can monopolize a generic term. The same result should apply to booking dot com. The addition of dot com is the online equivalent of company or Inc. It conveys only that respondent provides its services via a commercial website on the internet.

Unknown 1:37

There is no sound reason for a respondent to be able to federally register booking dot com as a trademark when it couldn't register Booking Inc. Registration would effectively give respondent a monopoly on the wordsbooking dot com and would interfere with competitors' ability to use similar domain names. That's particularly problematic because of how the internet works. Only one entity can obtain the contractual rights to a domain name at a time. The respondent already enjoys significant competitive advantages that brick and mortar equivalents like booking ink would lack. That same feature of the Internet also means that if respondent survey evidence is enough to obtain federal trademark registration, then nearly every generic dot com business can do the same.

Unknown 2:20

Because domain names are one of a kind, a significant portion of the public will always understand a generic dot com term to refer to a specific business, even if it is not familiar with the particular business at issue.

John G. Roberts 2:32

But the result is interesting. Council, you mentioned the uh Goodyear case. But you did not quote the language from the trademark statute that is at issue here. That language says that the primary significance of the mark to the public shall be the test for determining whether the mark has become generic. Now the Goodyear case had a different test, an absolute rule. And it seems to me that in trying to decide what Congress had in mind. it makes more sense to follow the language that Congress chose in the statute rather than a one hundred and thirty year old case uh of ours.

Unknown 3:20

So uh Mr. Chief Justice, two points on that. The first is that the Lanham Act actually preserves a distinction between generic and descriptive terms. And so generic terms it confirms, and this is both in the definitional provision and then again in section uh 1025 E and F or 1052 excuse me ENF confirms that generic terms are never susceptible to trademark registration even when they acquire secondary meaning and uh descriptive terms, nearly descriptive terms may acquire trademark significance when they acquire secondary meaning. So I think um it is it it the Landham Act preserves sort of the underlying principle of Goodyear. Now moving to section 1064-3 specifically. Uh, the cancellation provision that you note, that's on um page 11A of our appendix.

Unknown 4:08

It says the primary significance of the registered mark to the relevant public rather than purchaser motivation shall be the test for determining whether the measure the registered mark has become the generic name of goods or services.