Transcripts For CSPAN Supreme Court Oral Argument In Patent Trademark Office V. Booking.com 20240713

Please the court, it is a fundamental principle of trademark law that no party can attain a generic trademark like wine or cotton. As the lanham act confirms, a generic term is neville is never entitled to protection matter how much work the promoter has used and what access it has achieved. In other words, secondary meaning or acquired distinctiveness is simply irrelevant to generic terms. That booking is generic for the Hotel Reservation Services Respondent provides and they could not federally register booking. In goodyear, this court called that the mere to an unpredictable term does not create a protectable mark because the terms indicate only the parties have formed an association to deal in relevant goods. Fromprohibited an adapter obtaining this, goodyear ensured that no party can monopolize a generic term. The same result should apply to booking. Com, the addition of. Com and can be use only that the respondent uses a commercial website on the internet. Registration would effectively give respondent a monopoly on the words and would interfere with the ability to use similar domain names. This is problematic because of how the internet works. Only one entity can obtain that rights for a domain name at a time. Respondent enjoys significant advantages. The same feature of the internet also means that that is enough to obtain federal trademark registration, and nearly every trademark business can use the same. A significant portion of the public will always understand the generic term to refer to a specific business even it is not particular familiar with the business at issue. You mentioned the goodyear case. 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. The goodyear case had a different test, absolute rule. Trying too me that in decide what congress had in mind, it makes more sense to follow the language that congress chose in the statute case. Than a 130yearold mr. Chief justice, two points, the first is that the lanham act actually preserves a distinction between generic and descriptive terms, so generic in sectiononfirms 1050 two, the generic terms are never susceptible to registration even when they acquire secondary meaning. Descriptive terms may acquire the trademark significance, so i think the lanham act preserves the underlying principle of goodyear. To this section, the cancellation position provision, that is on page 11 of our appendix, the significance of the trademark shall be the test for determining whether the mark has become the generic name of goods or services. Significant that that was enacted, suggesting it overturned was enacted in 19 80 four, but that was a lot closer to today than the goodyear case. I do not know why we would focus more on the statutory language than that old case. Ife to the point may be, this is a generic term, booking. Com, that means it describes the category of goods or services. When you talk about other category,in that whether it is priceline or whatever, nobody refers to those so booking. Com is not a generic term to describe that service. Mr. Chief justice, the first point is that we agree that any ordinary case, one might use the term generic to understand it, how the consumers generally refer to a class of goods. I think it can be also used for thea specific entity or how public would understand a specific term. Thatodyear, the court held goodyear inc. Could not be trademark, and that is true even though nobody refers to a class of that thank you. Justice thomas. Questions, could 800 number,ire an to one800lar plumbing, which is a registered mark . But i thinkould, that is debatable under goodyear, but the pto does follow those decision because of the right of direct appeal to the federal circuit from pto decisions. I think it is significant that those are distinguishable, and the court problem is that it allows the respondent to monopolize booking because of the fact that longer names can include booking. Com but it is not obviously true of something 1800booking. That could be true, but i would like you to compare this to goodyear. In goodyear you have a generic term, but you also have added a term such as company or inc. Which any company could use. With booking, there could only address,. Com. This would seem to be more a necklace analogous to the 800 numbers. You are completely correct that only one internet entity at a time can hold the domain name rights to booking. Com. I think that works in our favor. The first reason is that the slip respondent does not give it every domain name should get a trademark. I think the reason that respondent does not do that is that it means if it is good for ent ding respondent would wind up with a very thin trademark protection. Putting that to one side, and the usual case, what a registrant wants is the ability to exclude from others to use the same name and to exclude others from using the names that are confusingly similar. Because of the functional nature of the internet, respondent has that advantage. Competitors that will want to use those terms in their materials because that will direct customers to the website of the respondent rather than their own. Termss why generic. Com the ability to block out competitors like e booking. Com and hotel. Com and i think that is exactly the type of competitive concerned that this Court Expressed in good we are goodyear. This will preclude others from calling their goods by their name and marketing themselves as what they are. Explained this in the court of appeals case of what respondent wants is something it could not get in the brickandmortar world. Usually we require businesses to decide whether to adopt the generic name upfront, allowing them to get recognition from consumers who understand what they sell. Justice ginsburg. First is ifions, does not makecom the generic term nongeneric, how many marks, already registered marks, would be subject to cancellation . I take it there are dozens of. Coms that have been registered. I think respondent suggests that there are far more than there actually are, if i could make a few points. The examiner decisions in our appendix, by and large our rule is being followed out in the world so i do not think theres going to be this huge change. Respondent does point to examples but i think they show a few flaws. One of them is that respondent seems to think on our rule the combination of any two nouns is always going to be generic. That is not true. You always have to look at how the terms are being used. Respondent looks to cheesecake factory, but of course that is not a literal factory producing cheesecakes. I do not think to focus onu cancellation. Onecould apply to cancel existing registration . If favor,e rule in your with the pto itself endeavored to cancel these marks . So. Do not believe i think competitors could under this section file petitions to cancel registration, and of course the fact that it was generic would allow cancellation at any point. Entities could have brought cases based on the binding law of the federal which is consistent on this point. Respondentsuse depended number of marks incorrectly registered, i dont think there will be a huge backlash if the rules change. To explain it a little bit more, respondent points do not just examples like cheesecake i have another question as a followup to justice thomas. Your answer to the telephone number question, one800booking, that is the federal circuit precedent, but our job in this case to do with that if the federal circuit is wrong. You have another distinction for , say, mattress or booking that would distinguish it from the domain name . I think the other distinction is that booking. Com can be in cancel late it in longer domain names in a way that one 800 booking really could not be, so there is sort of a defective reason why the same risks are not there. Justice prior breyer. Same question, what do you want to say, you can have a trademark that is an address, 1418 third street or something. You can have a trademark that is a telephone number. Why cant you have a trademark that is a. Com . Good morning. I think it is clear from goodyear that they balance these objectives that are always true in this law. We think that booking companies are essentially equivalent, all. Com tells you is that there is a website on the internet or booking, a type of service that is sort of a classic usage. We think that follows from goodyear. As i was saying, goodyear sort of balance is the two interests. We want to make sure that consumers understand that the goods they got last time is from a particular brand, so we want strong brand identification. On the other hand, we want to avoid monopolization of language. That is the concern that goodyear had with booking , and itor wine company is exactly the same concern that we have on the internet here because with using booking getting a trademark on it, respondent must want to be able to block out e booking. Com and hotel booking. Com and similar names. I think because respondent could not do that in the brickandmortar world, there is no reason it should be allowed to do that on the internet. You could have an address as a trademark, but i think that is different because that is not telling you about the services. The registrant would have to work to build up Brand Recognition in the same way that differentho uses a mark like amazon has to do. They do not get the sort of benefit from using a generic term where everyone now knows that they provide Online Booking services, and the respondents case, plus the fact that other competitors cannot use that name in the consumers will go to booking. Com expecting that to be a site for booking for Online Booking even if there is no knowledge on the part of the consumer about that website. Thank you. Justice alito. Alito what do you think i should do if i think that goodyear is a case from a and does not control here, but also think that the lanham act similarly was enacted in a different era, namely the preinternet one, and that the case law in which ms. Blatt relies belongs to that time . How can a will that make sense in the internet age be reconciled with the language of the lanham act . It is pretty easily recognizable, and i went to go back to the first question about the primary significance test. Of in theis sort statutory this comes up in cases like and thingskodak where it is a coined term. As respond it can see, this is a narrow role, and in 1984 Congress Passed this amendment that had applied a different test in this context. It is true that other courts have applied other analyses and other places, but that is because of the common law. We think goodyear continues to control for the same reason that this other preexisting commonlaw does. Taking those outside of goodyear , even without goodyear you have this very basic trademark policy that has always been true which is a generic term is simply not susceptible this court recognized that in two cases following that lanham act. I think it remains true on the internet just as it remains true in the brickandmortar world. Trademark is always trained to make a balance between competition and Brand Recognition on the one hand and monopolization on the other. I think the monopolization site speaks very strongly to the sosition because respondent view would allow them to monopolize any term. Requires themally think to hedge as to whether the ord oranges or oranges. Com oranges. Org would remain generic. The survey shows the public continues to think of this as the fruit of the same color. Hink the other point that respondent to theith respect codification of the primary significance test, i do not think that is the core of the argument. The argument is much more that alwaysst much must look to survey evidence and giving that evidence dispositive weight. That is not true under goodyear, which i think is reconcilable with the significance test. One particular defendant had sort of the best claim to sotomayor. Sotomayor i am sorry, chief. Miss ross, picking up on where you were right now, is it your position that the primary significance test to the public is never to be used to determine what is generic and what is not, or is it if we do not use that test at least in whole or in part, what other things with a pto examiner look to . Position thatur the courts and the pto can never look to the primary significance test. I think the reason why courts do that is that the lanham did not overturn the existing commonlaw. That speaks to why we think goodyear remains the law. I think what courts should do is look to other sources to figure out what a generic whether something is a generic term, usually means its going to indicate the type of goods. ,he dictionary is very helpful the use by other competitors like again hotel booking. Com and you booking. Com here. Should not doyou is give weight to other evidence , but this one brief explains, that is going to cause some issues in these particular circumstances. Because of the functional nature of the internet, i think everyone understands that only one entity at a time can hold the domain name looking. Com, surveys will misrepresent the number of people who understand that booking. Com is the business as opposed to only infer that because of the way the internet works. Stop you there for a moment. I looked at your definitions of booking and it basically said booking a hotel, but the service is much broader than that. You can book a hotel, leisure, cars. , that may be a problem with my looking at booking as generic, that if int being look at all of the evidence you point to, e booking, car booking, hotel booking, that a finder of fact could conclude is in factg. Com related to one entity and not to descriptive than a generic phrase. I think that was not presented here and i disagree on the merits. Acknowledged, no longer contesting that booking is generic for the classes service here. To go to your broader point, i think this speaks to the problem with a lot of the examples which is to say that you are always looking at the particular category for which the goods are being registered and the usage. On this idea Justice Kagan. Justice kagan good morning. I am right in saying that youre advocating for a categorical rule here, am i not . Youre not saying that trademarks will rarely be registered of this kind. You are saying they will never be, correct . I think it depends on what you mean. We think that when you are simply upending booking. Com. Sure. Booking. Com and other places were that addition does not add any additional meaning. We do not think some of these could necessarily never provide for trademark protection. We just do not think it is presented here. The pto takes a categorical ition, saying it does not say never. Why is there a difference between what the examiner manual say and what you say . I do not think there is a difference. I think the pto leaves open, this narrow category of rare cases that the federal circuit and the ninth circuit have recognized. I think what respondent would do is expand that category. It tried to say this is the rare case, but i think basically every generic. Com case will have this kind of evidence because of the knowledge of how the internet works. Are notur brief, you making the argument that people go around talking about looking. Coms but you are saying it is generic, and this is on page 40 four, because customers would understand the term to convey only that the Company Provides Online Booking services. The term conveys no additional meaning that would distinguish respondent process services from those of others. When i think about that test, i think maybe or maybe not. If the test is what you say, what is a consumer going to understand, and does the term convey additional meaning that would distinguish the respondent s services from others, so i think it maybe would. How does that go along with the categorical rule . To the extent you think it could convey to consumers some additional meaning, really the only meaning that respondent ever pointed to is this idea that it points to a particular website. Functionale of a feature of the internet to which we usually dont give a trademark protection and for all of the competitionbased reasons, i think that cannot be enough to get them over the line. This is sort of the key distinction between generic and descriptive terms, one identifies the type, where is the descriptive terms tells you something about a feature of the service. Pie ie, generic for Justice Kagan . sorry to interrupt. Is there Something Else that you would like the court to if categorical is a bridge too far, is there Something Else that we should be thinking about in terms of saying when it is the generic marks are registrable. First we obviously think the court should follow goodyear it i think what goodyear said is that Generic Company terms, without further specification, will be enough to get trademark protection. I think that is what we are asking for. Briefly, miss ross i think we want at a bare minimum the risk of confusion analysis to be extremely sensitive to the fact that what is driving the intuition is the use of the domain name so that equally applies to the competitors. Justice gorsuch. Justice gorges gorsuch suppose the court does not accept your rule, how would you advise the court thatite in an opinion draws on to this sensitivity necessary . Points. Ple of the first is that i think even if the court did not think that the goodyear case controlled, i think it is indicative of the right type of analysis in terms of the concern with this language. Lets put goodyear aside for the moment. I know you want us to go there, but put that aside for the moment. What would you have the court say . I would want them to recognize, as the lanham act in due no terms, generally not susceptible to ondemark recognition based meaning. So respondent would have to come forward with evidence other than simply this secondary idea that this is a term that just tells you that it is an Online Booking agency, but consumers have come to understand that it is Something Else. That distinction could have bad consequences outside of the. Com contacts. Again the oranges example where everything is now subject to survey evidence. I guess that leads to my next question. Tools under the lanham act sufficient . In every case, not just this area, we would always take very seriously questions about consumer confusion. It seems to me a lot of your argument on competition law withy issues is concerned confusion. The lanham act accounts for that. It seems like you are concerned about the use of the generic term, but fair use doctrine is designed to account for that, so why arent there sufficient tools to address the concern you have raised . Why isnt this just another example of where intellectual property concerns intersect and we have to respect the judgment congress made in this area . There is a lot in that question. My first answer is that we think that the tools are sufficient. They just point in our direction. The fact that generic terms cannot be trademark under the lanham act is enough to resolve this case. Moving on, you mentioned the risk of confusion analysis. I think it is notable that respondent says we should get a trademark on booking. Com, but if he booking. Com a large part of that is we are unique. If he booking. Com comes along, because we were here first. If booking. Com gets trademark protection because it is unique, it seems as though he booking. Com should get equal protection because it is also unique. I do not think these terms are resolved under existing law. Kavanaugh good morning. Respondent says there is no threat of monopoly with domain names because they are unique. They say they would not be booking. Com ort e similar names in their brief. What are the real world practical problems you foresee. Coms could obtain trademarks . I think the real world problem is that i do not believe respondent says they would not nk that we think we get the territory and you do not. I do think there is a very real risk of monopolization in that sense. The other risk is that respondent has already gotten these advantages from the fact that it can control booking. Com on the internet. It is asking for this privilege that no business would have in the real world of both getting the exacerbated first mover advantages of using the generic name, and then also getting the back end trademark protection. I do not see why the internet contacts should permit that even that it gives respondent a huge advantage. I think this is sort of maybe a lesser level, but if it is true that booking. Com and presumably every other domain name can get a trademark, then youd have this problem where the trademark system is becoming a domain name registry system. I am not sure why rather than following bedrock principles like generic terms cannot get trademark protection, therefore no booking company, the court would go in that direction of ing a cause id nr idnr for domain names. Respond . U sure. I think that may well be true. I do not think it is relevant here. Obviously those other countries are not constrained like goodyear as we think this court is. They are not constrained by the lanham act as we think this court is. I think that act preserves the understanding of the deer which is no company can obtain a trademark on a generic term. It shows that the public has come to associate it with its goods. Miss ross, take a minute to wrap up. I think our basic points are simple. We think the rule flows directly from goodyear, simile the online version of company and it tells you only that respondent operates a commercial website through the internet where bookings can be made. We think it is consistent with andlanham act preservation with longstanding trademark policy. Contractndents rule i would overturn the rule and for all of those reasons we would respectively courttfully ask that the ruled for us. May it please the court. This case is about how to tell the difference between descriptive names the lanham act protects and generic ones that act does not. The three reasons that the answer is the primary test and first the act mandates the test and secondly, goodyear, and third this test furthers the statutory purpose to let consumers decide which marks deserve trademark protection. First, the text. The act has always required in some sections trademark registration if a mark helps consumers distinguish among brands. In other words, the act protects descriptive names but excludes generic ones. Codifies the law of unfair competition which has right before Congress Passed the act, this court in kellogg adopted the significance test under unfair competition law. Past 70 years courts have embraced this test to tell the difference under the lanham act. It was against this backdrop that Congress Later codified the test in sections 10 60 four to overrule the decision departing from this test. Reflects the ratification of the test to define a generic name in all contexts. The government has no other test for the dividing line other than primary significance. Second, goodyear did not survive the lanham act. It repudiates route to branch any per se rule that one island of words are generic as a matter of law. The following sections necessarily defined to nicknames as ones that do not help consumers distinguish among brands because Everything Else must be registered. The factual question about what consumers think is the antithesis of this rule. You rely heavily on the primary significance test, but that is only in the provision of the statute dealing with cancellation of marks. This is not a cancellation case. It is a registration case. Why should we assume that the primary significance test carries the weight that you would give it . Sure. Section we, this think is a ratification of the law as if you were looking at the dividing line between what the generic term and what the distinctive descriptive term is, and this was to overrule a decision that had come up so it was targeted to that ninth circuit antimonopoly case. In terms of this test, if you ignore this section, there is still no other test other than one that looks to what consumers think of the mark because three 4,ovisions, regardless of 106 require registration maybe one reason that because put this in is they appreciated the significance of goodyear. With respect to registration of marks. I do not think that can be right because goodyear is a common law rule. Goodyear is a commonlaw rule that is based on the principle that note mark could be trademark if competitors could with equal truth hypothetically say that about the mark. So goodyear by its terms interchangeably uses the word generic and descriptive parks. That was true because commonlaw did not care. Both were offlimits. Wineourt specifically said company is no different than and thel company, corset said both were offlimits. Rightourt in five cases after goodyear described good here not only a case about ,cript of terms but two cases ,ited on pages 28 of the brief and that is with the government basically says booking does not deserve a trademark because everyone with equal truth could be a booking company. There are a lot of companies that use booking in the second booking. Com, hotel travel booking. Com. If you succeed in trademarking looking. Com, then these competitors will be impeded from using that term which is the accurate description of the services and goods that they provide. Is something we should take into consideration . Sure, iq should with all marks that are descriptive. The bottom line is that these marks should be treated the same. There are three reasons why you should not worry about the governmental concerns about antimonopolization. The concerns are just in a brief period they do not give you a single example of harm despite the ubiquity of generic marks and the fact that booking. Com is registered in 85 countries would you quickly note your second and third reasons. Legal third reason, the reason, why it does not crowd out. The more descriptive a mark is, the harder it is for that to show a likelihood of confusion in any infringement claim. Justice thomas. Getting back to youquestion, ms. Blatt, seem to rely almost exclusively on the primary significance test. Do you need that test to prevail here . No, because regardless of what you think of our test, the government cannot be right. Three statutory provisions do not mention the test overrule, repudiate and eradicate any notion that you could have a rule that would ignore what consumers think which is why the court said that if you look at marking, do consumers find the mark useful. I think the other problem, putting aside these three provisions, is there is a separate problem that the government has, that there are two provisions that require courts to look to how consumers view the mark as a whole. So you cannot just think because wine is generic and company is generic, wine company is generic. That is the same with the word container and the word store. You put the two together and you have to look at the way consumers would do that as a whole. That also abdicates the per se rule. That everyhappens court has always said the primary significance test governs the pto manual says it. It is the test that was applied here. If i could turn to Something Else, this appendix could the governmental appendix of rejected marks is not based on good we are goodyear. ,o look at the records bookkeeping. Com, newspaper archive. Com. There is no goodyear. This is about how consumers would perceive the mark. The appendix is the same, it is not based on mistakes. Dating. Com, and another bed and breakfast mark, the pto looked at extensive evidence. It was not some lazy officer. It was somewhat looking at the significance test and saw that i sayeeing that consumers this is distinctive. The status quo is this test. That is what has been it should give the justices some comfort that most marks flunk this test. Some do not. The government relies on goodyear and you say that there has been a seachange in trademark law since goodyear particularly with the lanham act. Would you just explain briefly how you think they lanham act has expanded the trademark law and what is protected and what is not protected . Sure. It is a basic overhaul in the sense, again, these are the five cases that are cited on these pages on our brief, and all of canald chestnuts, company, famous cases that are all about the bar on descriptive marks. Not,annot, may not, could youemark these companies, just cannot do it. Everybody has the equal right to say they have that particular characteristic. Ginsburg if you have the same name, then the consumers will note that the not com will get you a particular sauce. Yet you do not argue that always. Com is potentially trademark a bowl le. Demarkab in terms of when it flunks the significance test, i will give you some examples, the sites that i gave you from the government appendix are good examples of how generic marks flunked the test. There are several examples. From the survey, the majority found that washing machines. Com majorityc, and yet a found that booking. Com refer to the travel website that is used around the globe. Another example that is sort of a commonsense example, sometimes. Comse take of generic word generically. I have searched every grocery store. Com looking for toilet paper trade i have now started looking at every hardware. Com. Generic usages of a. Com. Ic word i think these examples just show you, and let me correct for the record about the surveys. That evidence is never dispositive. You always look at any and all relevant evidence about consumer usages. If there is evidence from newspapers, trade journals, they give you reason to suspect a survey is unreliable, then dont credit at. As aeneric market loses factual matter because the evidence is overwhelming that the mark flunks the test. Its just that here the government dropped, try to argue the survey was unreliable, but it waived that in the court of appeals. The District Court said i am not relying on the survey, but on all of the evidence about booking. Com and the lack of the pto evidence. Other cases will turn out differently. If passing offg on other service as your service is what you are really concerned not the unfair competition law afford you adequate protection . Mainly the reason is because we are a business and we went the same competitive rights that every other agency has. Specifically, these marks need these sections in particular thesee it allows proceedings. If you have a cyber scam, they largely arise overseas, and the person is beyond the jurisdiction of the u. S. Courts. What this act does come if you are a trademark, it allows you to sue the domain name and shut it down. Spoofing and all of these other cyber scams are prevalent. I do think even if you did not have the internet specific reasons, we are not secondclass citizens. We deserve the same registration rights as any other company to protect against outright counterfeiting and encouragement. R directing your this trademark it is a combination of four things. One, the trademark law is supposed to give the company the advantage that grows out of a commercial identification. It is not supposed to create monopoly power or market power beyond that. Here the power of the trademark, your trademark, is exactly growing out of the fact that Everybody Knows there is one com with one name. If you can do it in the future, you do not have to worry about searching the internet for toilet paper from roastery stores. Com. Here will only be one there will be cookies. Com, etc. Second, the problem is maybe not so bad if that was the only thing that they could use. There will be lawsuits when it pizza. Com because that is italian pizza, so we are creating this area of exclusivity well beyond the name. The third thing they bring out is that the identification that you talk about flows civilly from the fact that people now know that each Internet Company has one name. The interesting thing about your survey is not the 73 percent of the people who think that bookings. Com is a single company, but the 33 percent who think that washing machines. Com is a trademark special company, which it is not. They do that because they know about the internet. You are taking internet power, not just advertising or commercial power and multiplying it. And then what Justice Ginsburg said, there is another way to achieve your result, unfair competition law. I want to hear your answer to those points. Statute, there is the that it decided the policy decision in our favor if we meet the definition. Second, the policy matter, this is just wrong. If you look at these pages in the trial court record, that was andgovernment experts story the judge rejected it, and if you look at the joint appendix, our expert trashes that gohodology and says, ok, ahead, remove every Single Person who bought washing machines. Com was a trademark. You still get a 64 percent, which is huge Brand Recognition for booking. Com. There, the appendix just destroys this argument. They rejected these marks they in and day out. They do not get registered. And reality destroys their argument. Where are the lawsuits . I do not see any. Tickets. Com and vel. Com, and then nine endless, the notion that anyone is being crowded out is just silly. It would be one thing if they could explain someone complaining, but the ubiquity of the travel marks in the ticket nuts. Is what would your position be if companies that took booking. Com but made slight variations, about trademark protection . Protection . Defense,the fair use allows under this section, that anyone can use the registered name. Here it would be booking or booking. Com to describe their services, no liability. Huge thing on this that the more descriptive the names, these lawsuits just do not work. , alzheimers has a foundation. Your client would not object to any slight variation in booking. Com, that would be fine, all of these companies could register their trademarks. There are just answer the question. They dont and have not. If there was fraud and somebody ripping off the good will based on booking. Com, im sure they would want to sue. It would be hard to bring that lawsuit. Your positionwith justicely what i think breyer suggested, you are seeking a degree of monopoly power that nobody couldve had prior to the internet age. I take it a company could not have registered booking company, but because of the internet, you have booking. Com, which gives you the advantage over other companies in that business. Now you want to get even more advantage by getting trademark protection for that. Turn to thed company situation, that is just not true. Company, and there is also the wick store, and the wick marked so it is not like that company has credit out those wick companies. There are many places that sell them just fine. It is not like any generic word. Com has crowded out. La. Com, they are so many variations that are registered and not suing each other and no one is complaining, that you just type in law. Com in the database and you would see it. That is fine in terms of seeing that is just what the pdo does. The fact that they do not have any anticompetitive harms seems to be telling me you would not want to write an opinion destroying the billions of dollars of good will that has you extendup, and if your past corporate designation, the governments fight it. It says that means an association or partnership. This is a store to buy stuff. Sotomayor i am troubled about the monopoly situation. I am also troubled by what is the rule that you want the pto to follow . They cannot trademark under law generic names. Are they required now to run their own Consumer Perception surveys before they determine that a particular name is generic . Are you from here with the rule that there is no per se rule, how is it going to change pto practice and wont that lead to the registration of every single common name of every business and then an expensive legal fight on whether it has become a generic or not . Our view is the status quo, the significance test, with the pdo manual says and what it has been applying which is why the dependence is are consistence. It shows the pto day in and day out rolling up their sleeves and applying the significance test. Do not have to have a survey. The pto looks at evidence and , consumerss just would see this as referring to any place on the internet that sells these goods. They are not getting registered. End of story. Inour list, when they let weather. Com, they looked at different evidence and said, weather. Com has a big consumer fan base and has the primary significance of being a brand. We have to register that. That is good for consumers. You want consumers to know when they go to weather. Com they are getting other. Com and not ac cuweather. Com. Pto is up tout the the task. We have had their marks that have been registered from the late 1990s and two thousand. Justice sotomayor . Sotomayor this is a factual question and not to give the pto deference, then what we will have is every District Court replaying all of this evidence that the pto looked at and, frankly, im on the margin with respect to your mark. Theuld have looked at booking and car booking and hotel looking at all of those thisokings and said really, booking standing alone is generic, even with. Com. You seem to be saying that they could be ruling wrong as a matter of law, could it be dispositive . Clear, i District Court, and it sounds like it would have lost, [laughter] [laughter] maybe, maybeayor not. No, we could. A lot of people go federal risk,t because you take a and District Court when you think you have good evidence. Thank you, counsel. Justice kagan . Justice kagan good morning. What struck me struck others, it seems theres a disconnect between the primary significance test and these kinds of names. The primary significance test is really asking does the consumer understand something as referring to a category of product, or instead as referring to a particular product or . Ervice these names by definition are unique and everyone knows they are unique. So, if you apply a primary significance test to these completely unique urls, arent you going to get a bias in the results . Isnt that true of the teflon survey . Its definitely true evidence generally, that you would seem to get a bias within the result and more things would seem to be registrable then really ought to be. Great question, i think i can clarify this for you. Just like the league company, with. Com, that can be generic for producers. Its not just that you have to say the wig company. No one thinks the wig company is referring to wigs. A typed be generic for of company. It is not just the type of good, its the category of the seller. Think of booking. Com being no different from container store. You could say that it is so unfair that there is only one container store. It is the same way with. Com. You are right about the internet indict, but that would every. Com every dot com mark, you would always win under the fear of it could never be generic. So courts have just been dealing with this, for at least two are treating the. Com marks like house marks, store marks, association marks. Justice kagan let me ask you another question the goes back to what Justice Alito said. He said to him that you would not sue any of a number of variants on the name. Who would you sue . Aen is a dot com going to win trademark suit . I havent seen any. The same reason the Alzheimers Association and paper markets are not all suing each other, they lose. These suits dont happen. But why people want the registration is twofold. One, outright counterfeiting. Booking. Com is a popular name and we dont want people ripping it off. I think if you read the brief from car. Com, they have car dealers putting up signs showing themselves as car. Com. Thats ripping off, theft, and thats what Trademark Laws are all about. Secondly, i think that they want , cyber scams. 5 d thats definitely what the internet amicus briefs are saying. That is what booking cares about. Booking does not like internet and cyber scams stealing , ruining reputations because someone infects your internet and destroys your identity. Thank you, counsel. Justice gorsuch . Justice gorsuch good morning. If i understand your point correctly, it is that the government concerns about the competitive advantage are minimized or mitigated by the fact that marks like booking. Com are relatively weak. Because you are putting together two generic terms. Consumers may well have your company in mind when they see that. We can argue about how good that is. But there may be no consumer confusion. That may also be true with the booking or hotel booking. Booking or hotel booking. And the relative weakness of the is your answer, together with fair use doctrine, to the government monopoly concerns. Is that a fair summary . Much better than i said. Justice gorsuch will you expound on that, please . Sure, let me help you with the reason they are so weak to begin with and why mccarthy has this chapter where similarly worded marks cannot sue others. Lets take a weather. Com. Turns out consumers, when you have descriptive marks like both of those that are registered, consumers become very conditioned to focus on the difference. If you look at booking and he booking, consumers e booking, they would know they want to go to the e one. Its hard to show likelihood of confusion because the more it becomes market, exceedingly unlikely to do it. Its the same problem that every shop,hop mart exchange, collective, a million paper marts. They all have similarly worded store shop places and they never sue each other. And if they do, they lose. And im not making it up. They had a whole brief to cite examples of lawsuits. Gorsuch i know we are not the trial judge here, but address Justice Breyers point . 74 consumers recognized looking. Com is your client, but 33 think that anything. Com is a real anything dot com is a real sword. As i understand it, 41 on the your mark. Ecognize what do you do about that . What should we say in this . Pinion, if anything standard. If not the facts. So, you have read the brief. You have not obviously read our expert. Justice gorsuch that is not fair, come on. You dont take 74 and subtract 33. Its just based on a lack of understanding of serving methodologies. You never out the participants. Lisa blatt, dumb as is a brand, wene take that out of the survey. If people took out washing as a generic,m 64 still saw booking. Com. Its an extensive discussion. Justice gorsuch im trying to extract a level up from the facts as to what the court should say with respect to these kinds of survey methodologies, if anything. Briefly, miss blatt. Miss blatt . Am sorry. What i would say is that the survey is, the survey instructs the consumer and participants had of time that Office Supplies are common and that office supply. Com is generic and if they didnt understand that, they couldnt take the survey. Staples. Com is a brand. Justice kavanaugh . Thank you, mr. Chief justice. I want to make sure i understand what you think about our , exactly in goodyear could be, principled it could have some value outside of the. Com context in the classic Company Context in which the case arose because they are inherently in your position more broadly, or is it that goodyear has no value anymore . Certainly you shouldnt , butd it to. Com dot com if you took goodyear at its word, youre killing nonprofits because of the association problem. That is how nonprofits identify themselves. Or a coalition, or society. You have a amputee coalition, the christian coalition. So many of these associational mark that i think goodyear would destroy. Just want to say one thing about the governments making fun of the cheesecake factory. Crab house is not a little house where crabs live, they are dead when you eat them and the government thought crab house was generic. If you go down the road of thinking that certain words are offlimits, i think you are creating a real mess that is very unstable on principles and unworkable and unclear. Picking up on Justice Kagans line of rationing, it seems that your rule invariably will lead to a situation where most every. Com business that sells goods or services will be able to obtain a trademark. In other words, your position leads to the opposite kind of bright line rule. Maybe thats ok. But is that wrong . And if so, when wouldnt it . At a gets wrong, but i hear at least six of you concerned about it, so i can try to help on this. What you can do is make it clear your opinion to the district or that there is evidence from all kinds of sources that all of those examples i gave in the beginning, citing all kinds of examples proving that it flunked the primary significance test, the pto could look past the survey evidence and so could courts, if they were really worried about a survey by us. We have a brief of expert saying this was a great survey. Hate to trash our survey, but a lot of people thought it was great. But let me just take you to waffle house. Andpto called it generic waffle house came in with a survey and a trademarked it. So, i, i dont know why. Com scary andcom is should be treated differently because of this fear that all dot com marks have this unfair advantage because of a website. Its, you know, the pto has been doing this for two decades now without a problem. Thank you, council. Miss ross, you have three minutes for rebuttal. Miss ross . Three minutes for rebuttal. Mr. Chief justice. Sorry about that. If i could just focus on three main points . First, operating from the presumption that we knocked out all prior commonlaw unless expressly preserved, that the opposite of the way we usually think about it. I think just a couple of weeks ago nine justices looked to the common law to determine the reserve and i think that the same should be true here, particularly so because of the examples in the sites. Congress was clear when it wanted to overturn the precedent. On the second point, respondents in particular, i heard the suggestion for the first time today that kellogg itself did it , which is inconsistent with page 22 of their grief, acknowledging that kellogg discuss the primary significance test about when a term would get protection under unfair competition laws, consistent with the view here that generic terms are never susceptible to showing ofeven with secondary meaning being made. We think the primary significant includes goodyear and points to the idea that the pto has been applying the primary significance test and thats true with the goodyear guardrail, understanding that a generic term cannot be made into a trademarks of the showing a bunch of consumers think it is associated with a particular mark or brand. Actuallyent example proved the point. There was a lot of back and forth about washing machine. Com versus booking. Com, but whats instructive here is washington. Com washing machine. Com versus supermarket and they thought washing machine was a brand name. Not one respondent thought that supermarket had that characteristic. Clearly the. Com the dot com context is doing a ton of that work. The third thing is this idea that there wouldnt be competitive harm from respondents, and i think thats clearly not correct. Because of the same reason these companies shouldnt allowed to be trademark. We just know that when you have that trademark, its not supposed to take terms off the table that Everyone Needs to describe their goods. Respondents focus on certain examples. I think again the respondent is misunderstanding that you always have to look at what those are registered for. Tickets. Com is for ticket management services, not tickets generally. They are massively overstating whats going on here. There might be hard questions at the margins as to whether some like container or tickets are being used, but is not reflective of the. Com or the company at that level. Finally, if they are not going to sue, its really an clear what they want out of it. Covered by unfair competition. Section 1125 b presumes that you have a preexisting trademark, like kodak, xerox, or teflon in the old days. Someone comes along and guesses. Thank you, counsel. The case is submitted. [captioning performed by the national captioning institute, which is responsible for its caption content and accuracy. Visit ncicap. Org] [captions Copyright National cable satellite corp. 2020] this was the first of 10 cases to be argued over the two weeks using telephone Conference Calls and letting the public listen live as arguments are made from homes and offices. The National Constitution center will discuss the history making moment and the trademark case argued today. Live coverage begins in a moment. United states, cspan watchers, friends from across the country can evaluate for yourself. I want you to do some homework after this show, to read the briefs in the case, go to the Supreme Court website, you will find the briefs under the homepage. Canr the discussion you really dig into the arguments on both sides. Read the brief on all sides to make up your own mind. With that introduction it is