Justices Tackle Trademark Protections for Dot-Com Era

The U.S. Supreme Court. (Courthouse News photo/Jack Rodgers)

WASHINGTON (CN) — After the pandemic shut its physical doors, the Supreme Court aired its first livestream Monday, teleconferencing on whether the travel website Booking.com is too generic for trademark protection.

The historic proceedings brought a strange juxtaposition, with the lawyer for the booking website emphasizing the name recognition of Booking.com at a time when the threat of coronavirus has brought that industry to its knees.

Williams & Connolly attorney Lisa Blatt meanwhile updated her argument with some internet search terms that might resonate with the times.

“Sometimes people think of ‘generic-word-dot-coms’ generically,” Blatt said. “I have searched every ‘grocery store’ dot-com looking for toilet paper. I have now started looking at every ‘hardware’ dot-com. I am using ‘food delivery’ dot-com for all of my take-outs these days. Those are generic usages of a generic-word-dot-com.” 

Describing a survey that was conducted for the case, Blatt noted that the majority of people thought “Booking.com” referred to her client, whereas they responded overwhelmingly that they would expect “washingmachines.com” to apply to a generic product.

Justice Stephen Breyer grilled the lawyer on this, however, noting that the upshot of 73% of people identifying Booking.com as specific meant that some 33% thought washingmachines.com was a real company.

Blatt said excluding those individuals who said washingmachines.com was a real company still yielded Bookings.com a 64% in consumer recognition through its primary-significance test.

Though the lawyer argued that the standard for 70 years has been whether a consumer can immediately discern if a term applies to a general product or specific company, Breyer said trademark law was not meant to create monopoly power beyond giving exclusivity of commercial identification.

Here the “power of the trademark” is being given to Booking.com simply because everyone knew it was the only website able to offer those services, he said. 

“And if you can do it in the future, you don’t have to worry about searching the internet for toilet paper from grocerystores.com, there will only be one. … There’ll be pizza.com, there’ll be cookies.com, there’ll be flowers.com. We’re creating an area of exclusivity that goes well beyond the name.”

Though the government has warned of the lawsuits certain to follow if booking.com is trademarked, Blatt said this prediction is undercut by the lack of complaints against competing companies with similar names.

“Reality destroys their argument,” Blatt said. “Where are the lawsuits? Where are the complaints? Nowhere, I don’t see any. … The notion that anyone is being crowded out is just silly.” 

Standing outside the Department of Justice in Washington, Assistant U.S. Solicitor General Erica Ross poses Monday with U.S. Solicitor General Noel Francisco after becoming the first lawyer to argue in the Supreme Court’s first arguments conducted via telephone. (AP Photo/Jacquelyn Martin)

Assistant Solicitor General Erica Ross focused largely on the precedent of the 1888 case Rubber Company v. Goodyear, which challenged the use of a patent outside of the field for which it was first intended. She said dot-com domains were never meant to be registered for trademarks.

Chief Justice John Roberts first questioned why the court would expect the precedent from 130 years ago to carry the day over a 1984 update to the Lanham Act, then emphasized that no one would refer to Booking.com as a generic to encapsulate competing travel-site companies such as Priceline and Travelocity.

Justice Clarence Thomas — whose personal brand is usually marked by silence at oral arguments — broke his silence on the bench for the first time this year, asking multiple questions of both sides Monday.

With Ross, Thomas focused on toll-free numbers, which have been known to be occasionally trademarked.

“Could Booking acquire an 800-number that’s a vanity number?” Thomas asked. “1-800-booking, for example, that is similar to 1-800-plumbing, which is a registered mark.” 

Ross said under the current law, yes, a company like Booking.com could acquire a similar 1-800 vanity number. 

“The core problem with ‘Booking.com’ is that it allows respondent to monopolize booking on the internet because of the fact that longer domain names of respondent’s competitors, like ‘ebooking.com’ and ‘hotelbooking.com’ can include ‘booking.com,’” Ross said. “That is not as obviously true of something like 1-800-booking.”

The U.S. Patent and Trademark Office is fighting for a reversal after the Fourth Circuit ruled for Booking.com last year.

For the court’s first attempt at disseminating live audio, Gabe Roth, executive director of the Supreme Court transparency group Fix the Court, remarked that the broadcast went well.

Technological hiccups appeared limited to a moment in Justice Sonia Sotomayor’s first round of questions where her phone was on mute, and Breyer’s brief experience of distorted audio.

Roth pushed for the court to stick to this system even when pandemic protocols no longer require the court’s closure.

“The days of restricting the court’s proceedings to VIPs, the press and a few dozen members of the public are over,” Roth said in an email. “Now that we know with certainty that live audio does not impair its functioning, there’s no reason for the court to return to its outmoded policy of week’s end audio releases once we’re past the pandemic.”

Remarking on the novelty of remote hearings, Winston & Strawn attorney Mark Werbner noted Monday that lawyers cannot tailor their arguments to the cues of the justices’ body language. While not an exact science, attorneys can often determine agreement, disagreement, interest or boredom, said Werbner, a Dallas-based attorney who appeared before the court to argue the 2015 patent case in Commil USA v. Cisco Systems.

“Today the only material to ‘read’ was the voice of each justice,” Werbner said in an email. “That [is] much more difficult, especially on the fly.”

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