By Shane Wax
On May 4, 2020, the Supreme Court held arguments in the matter of the United States Patent and Trademark Office vs. Booking.com. The occasion marked the first time in history that live audio of a Supreme Court oral argument was streamed across the Internet. While audio files and written transcripts have long been made available as soon as possible, never before COVID-19 and the consequential avoidance of direct interaction, could Americans listen to the Justices – even notoriously quiet Justice Clarence Thomas has begun regularly asking questions during telephonic arguments – and Supreme Court advocates speak in the moment.
In happenstance, this groundbreaking occasion concerned the application of a core concept of Trademark Law – namely that generic terms can never be trademarked – to the world of e-Commerce. Specifically, this case tests whether the addition of a generic top-level domain such as “.com” or “.net,” to an otherwise generic term can, in combination, be a non-generic mark, such as “Booking.com.”
The United States Patent and Trademark Office (“USPTO”) argues that the addition of the suffix “.com” is akin to a generic corporate suffix such “Company” or “Incorporated,” and that under an 1888 Supreme Court case, “the Goodyear Case,” the mere “addition of the word company” cannot turn a generic term into a non-generic term, and after all, how is “Goodyear.com” any different from “Goodyear, Inc.”? For example, visitors to wine.com would understand they are visiting a website about wine, and an individual who is buying products from NFL.com probably understands he or she is making a purchase from the National Football League, and the addition of “.com” does not serve as any source identifying purpose anymore than “, Co.” or “, Inc.” does.
The trademark applicant, Booking.com, argues that the Goodyear Case is no longer good law, a proposition that seemed to resonate with several Justices. Booking.com argues that the Lanham Act did away with “any per se rule that an island of words are generic as a matter of law regardless of consumers’ views,” which had already been eroded by decades of other Supreme Court decisions by the time the Lanham Act was enacted, including “the Kellogg Case,” noting that the Goodyear Case did not distinguish between generic and descriptive marks, but rather distinguished between generic or descriptive marks, on the one hand, and, on the other, more suggestive, fanciful or arbitrary marks. Moreover, the fact that the USPTO has issued trademark registrations to “The Container Store,” “Waffle House,” and “The Wig Company” suggests that the basic principle of the Goodyear Case is no longer viable.
Instead, the applicant argues that the Supreme Court should apply the “primary significance” test, first fashioned by the Supreme Court in the Kellogg Case, a 1938 common law unfair competition case that distinguished between non-registrable generic terms and potentially registrable descriptive terms. Under this “primary significance” test, an applicant could introduce evidence such as consumer surveys to show that the proposed trademark is primarily considered by the public to be a source identifier and not merely an identifier or description of the goods or services being offered. The Applicant points out that the “primary significance” test is frequently used by federal courts around the country and also regularly by the UPSTO in examining “.com” applications, and suggests that Congress embraced the test by including the language in the Lanham Act that authorizes the cancellation of a registered trademark when the “primary significance of the registered mark to the relevant public” becomes the generic term for the goods or services offered under the mark.
Ultimately, most of the Judges seemed unimpressed by the Goodyear Case and wary of applying a per se rule. Nevertheless, a strong plurality expressed (i) concern about issuing too broad of a decision that could potentially lead to every “.com” to obtaining a trademark, (ii) concern that granting a trademark to a “.com” might give the owner limitless power to prevent similar website domain names from springing up, and (iii) skepticism that consumer surveys may be biased and or informed more by “internet power,” as opposed to “market power.”
While several Justices noted precedents permitting the registration of trade names containing street addresses or novelty phone numbers, which are registrable upon proof of acquired distinctiveness or secondary meaning, others acknowledged the Government’s counterpoint that a web address is different from geographically descriptive terms because it can be monopolized in a way a real-world location cannot. For example, while Vail Ski Resort cannot stop other ski businesses in Vail, Colorado from using the words “Vail” and “ski” in their name any more than John’s of Bleecker Street can stop Bleecker Street Pizza, that is not as true in the case of web domains, which are one-of-a-kind and can be monopolized, and therefore offer a competitive advantage. There can be only one “wine.com,” and if “wine.com” is a registered trademark, the owner can theoretically prevent someone from doing business as “redwine.com” or “ewine.com.”
While this monopolization issue caught more attention than any other issue during the hour-plus argument session, the advocate for Booking.com appeared up to the task of assuaging the Court’s concerns, with a little help from Justice Gorsuch. First, the Applicant argues that the Lanham Act and existing law provide enough tools to alleviate concerns about monopolizing “.coms,” in particular, the statutory fair use defense and the likelihood of confusion analysis, under which the more descriptive a trademark is, the less strength it has in serving as a trademark, leading to a lower likelihood of confusion. Second, Booking.com points to the status quo, both as to how the USPTO actually operates – in that most “.com” applicants are rejected after a diligent analysis by an examiner – and how many descriptive websites with similar domain names – such as weather.com and accuweather.com – have co-existed for decades without lawsuits. Ultimately, as concerned as the Court may be about the potential for a monopoly, it is also wary about upheaving the status quo.
In the end, it seems likely that the Court will side with Booking.com, and formulate a narrow opinion rather than create any “per se” or bright-line rule. The Court may or may not denounce the Goodyear Case, and it may or may not adopt the “primary significance” test, or it may remand the case to allow the lower courts an opportunity to ponder an appropriate test. But it seems safe to predict that at least “Booking.com” will walk away with a trademark registration.
 Patent & Trademark Office v. Booking.Com, No. 1-46, Supreme Court Oral Argument Transcript (May 4, 2020), available at https://www.supremecourt.gov/oral_arguments/argument_transcripts/2019/19-46_4gc5.pdf
 Supreme Court Oral Argument: Patent & Trademark Office v. Booking.Com, C-Span (May 4, 2020), available at https://www.c-span.org/video/?471417-1/supreme-court-oral-argument-patent-trademark-office-v-bookingcom
 Goodyear’s India Rubber Glove Mfg. Co. v. Rubber Co., 128 U.S. 598 (1888).
 Kellogg Co. v. National Biscuit Co., 305 U.S. 111, 188 (1938) (A common law unfair competition case: “to establish a tradename in the term “shredded wheat,” the plaintiff must show . . . that the primary significance of the term in the minds of the consuming public is not the product, but the producer.”).
 15 U.S.C. 1064(3).
 As Justice Breyer noted, Booking.com’s own consumer survey found that nearly 1-in-4 people mistakenly believed that “washingmachines.com” was an actual service and trademark.
 15 U.S.C. §§ 1052(e), (f); see Burke-Parsons-Bowlby v. Appalachian Log Homes, 871 F.2d 590, 594-96 (6th Cir. 1989) (citing American Footwear Corp. v. General Footwear Co. Ltd., 609 F.2d 655 (2nd Cir. 1979), cert. denied 445 U.S. 951 (1980); Vail Associates v. Vend-Tel-Co., 516 F.3d 853, 856, 866 n.11 (10th Cir. 2008); Dial-A-Mattress Franchise Corp. v. Page, 880 F.2d 675, 678 (2d Cir. 1989); Dranoff-Perlstein Assocs. v. Sklar, 967 F.2d 852, 855-56 (3d Cir. 1992).
 Vail Associates v. Vend-Tel-Co., 516 F.3d 853, 856, 866 n.11 (10th Cir. 2008)
 15 U.S.C. 1115(b)(4). Under this defense, any other website offering “booking” services could use “booking” in their domain name and trade name.