Mr. Chief justice, and may i please the court, it is a fundamental principle of the trademark law no party can make a trademark for a generic term. As explained a generic term is never entitled to trademark protection no matter how much money and effort the user has poured into the merchandise and in securing public identification. In other words, second remaining as required for distinctiveness is simply irrelevant to the generic term. That principle here is undisputed that its generic for the Reservation Service is responding. They couldnt really register the name or the addition of an entity designation to an unprotected term doesnt create a protectable mark. Thats because the terms implicates those in the association oassociation or paro deal with the relevant goods. A doctor from obtaining a trademark enterprise and shorter party can monopolize a generic term. The result should apply to booking. Com. It is the online equivalent of company and can use only the services of a commercial website on the internet. There is no sound reason for the responded to be able to really register booking. Com as a trademark when it couldnt register booking inc. As particularly problematic how the internet works they can contain the rights to the domain at a time so the responded already enjoys a second competitive advantages, the brick and mortar equivalents booking inc. With black. It also means if respondents surveyed evidence is enough for the federal trademark legislation that nearly every other business can do the same. Domain names are oneofakind, significant portion of the public will always understand a generic term to refer to a specific business even if it isnt familiar with the particular business at issue. You mentioned the goodyear case, but you didnt quote the language from the trademark statute that is at issue here. That language says the primary significance of the mark to the public shall be the test for determining whether it has become generic. The goodyear case at a different test and 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 congress chose in the statute rather than a 130yearold case of hours. Mr. Chief justice, two points on that. First actually preserve the distinction between generic and descriptive terms and so generic terms it confirms and its in the definitional provision and then again section 1025 or 1052, excuse me confirmed they are never susceptible to treatment even when they acquire secondary meaning and descriptive terms may acquire trademark significance when they apply to the meaning so it is the sort of underlying principle of goodyear. Im moving to section 364 on the cancellation provision that you note. The primary significance rather than the purchaser motivation shall be determining whether the registered mark has become the generic name of the services. I think its the second that it was enacted in 1984 bits pointed to no case before the suggestion that it overturns. It was enacted in 1984 but that is a lot closer than the case that was 130 years ago. So i dont know why we would focus more on the statutory language then that old case. More to the point maybe if this is a generic term, booking. Com, it describes a category of goods or services. But when you talk about other categories whether it is travelocity, priceline, whatever, nobody refers to those as book. Coms. A few points on that mr. Chief justice. We agree that in the ordinary case one might use the term generic to understand how it will refer but i think that it could also be used in the same provision for how a specific entity would understand the term so for example in goodyear the court held that it couldnt be trademarked even though nobody refers to the class. The point here thank you, counsel. Justice thomas. Yes. A couple of questions. Could booking acquire and 800 number that is similar to 1800 plumbing which is a registered mark. Under the federal circuit decision, yes it could. Those decisions are debatable on the principles that we think are controlled but it does follow those decisions because of the right of the direct appeal to the federal circuit. I think that its significant they are distinguishable in the sense that the problem is that allows the responded to monopolize on the internet because of the fact they can include booking. Com but it doesnt as true as Something Like 1800 booking. That could be true, but i would like you to compare this to goodyear. With goodyear you have the generic term but also added the term any company could use. Now, with booking, there could only be one domain address so this would seem to be more analogous to the 1800 numbers that are also individualized. You are correct only one internet entity at a time can hold the rights. I think that works in our favor rather than the responded. It doesnt argue every domain name should get the trademark as i think would be the consequence of the position. I think the reason they do not do that is again then its good for Hotel Booking. Com and the confusion and analysis would also have to account for the fact that each of those is unique so they would line up with the same trademark protection. In the usual case of the trademarks, they want the ability but to exclude others from the same name and to exclude others from those that are similar because of the nature of the internet they already have the first advantage. So others cannot use booking. Com online and the competitors. The plaintiff in the case that really matters is the ability to block out competitors like Hotel Booking. Com and that is the type of anticompetitive concern the Court Expressed that if you allow one company, it is good to preclude others from calling it by their name and marketing it as they are. Now i think the judge explained this very well in the court of appeals. What the respondents want is something it couldnt get into brick and mortar world in the letter to adopt the generic name that allows them to get recognition from those that automatically understand what they felt. Thank you, counsel. Justice ginsburg. Two questions. First, is it right that dot com doesnt make a generic term non generic . So many are already registered marks would be subject to cancellation. I take it that there are dozens of dot coms that have been registered, is that so . I think they suggest there are far more. If i could make a few points on this. Its how they speak consistently on this point. So, by and large is being followed up and i dont think there will be a huge change. They do point to some examples but i think that those examples show a flaw and one seems to be the combination is always going to be generic and that isnt true. You always have to look at how the terms are being used so for example the responded it isnt a political fact. I would like for you to focus on cancellations. Who could apply to cancel an existing legislation . Wouldve they endeavor to cancel these remarks . I dont believe so, your honor. I think that the competitors could file petitions to cancel the registration and of course the fact that it was generic for a while to cancellation at any point. I think that those entities could have brought cases previously based on the federal circuit which was and is consistent on this point. It understates those that have been incorrectly registered and they do not have t dont have tt there will be a huge backlash. To explain a little bit more of why that is so, the respondent points to not just that example that i have another question i wanted to ask and it is a followup to Justice Thomas. It is a telephone number question, thats the federal circuit precedent that it would be our job in this case to deal with that if the federal circuit is wrong. You have another that would distinguish it from the domain name. Yes, Justice Ginsburg. Booking. Com can be encapsulated in longer domain names that it couldnt be another phone could be another phone numbers, so theres a sort of de facto reason. Justice breyer. On Justice Thomass question, you can have a trademark but its an address. You have a trademark that is a telephone number so why cant you have one that is a dot com . Its a very specific context we think that it is equivalent. All views is a website that tells you the type of service that is a classic usage. We think that follows from goodyear to balance the two competing interests. We want to make sure that the consumers understand the particular brand. On the other hand, we want to avoid the monopoly of the language and i think that is exactly the concern they have with the booking companies and its exactly the same concern that we have on the internet here because again by getting the trademark they must want to be able to block out similar names. Again because responding couldnt do that into brick and mortar world theres no reason it should be allowed to do that on the internet. You could have a sort of street addresses a trademark but that is fundamentally different because that isnt telling you anything at all about the services. They would have to work to bring up its recognition in the same way that a person that uses us to do. All of the components that go with it such as other competitors cant use that name and the consumers will go expecting to be the site even if there is no particular knowledge about the website. Justice alito. The do you think i should do is goodyear is a case from a different era and to send control here but also similarly it was enacted in a different era and the case law belongs to the era how can a rule that makes sense be reconciled with the language of the act . It is easily reconcilable and id like to go back to the chief justices question about the primary significance. The primary significance is in the statute to the remark considered distinctive so as you can see it is a very narrow rule to overturn the case but had applied a different context. Now it is true whether courts applied similar analysis and other places but that is because of the preexisting law simply think goodyear continues to control for the same reason the common law. But even taking the view outside to suggest you have a basic trademark policy that has always been true. The court recognizes that following the act citing the categories of the term and it remains true they try to make the balance between competition and Brand Recognition on the one hand and monopolization on the other. It speaks very strongly to the position because again it would allow them to monopolize any term. I think it is worth noting page 68 the test requires them to be generic so on their view it remains generic and the public continues to think of that as the fruit of the same color. I think that would be a surprising outcome into brick and mortar world on the internet. The other point with respect to the clarification of the significant i dont think it is the primary significance tests that separates the argument. Its much more that the test was always required moving to survey evidence. That isnt true under goodyear which is reconcilable because it rejected evidence that one has the best claim and that is consistent. Justice. Im sorry, chief. Picking up on where you are right now, is it your position that primary significance to the public is never to be used to determine whats generic and whats not and if we dont use that test in whole or in part however much they want, what are the thing in examiner for the book to . Isnt our position that they can never look to the primary significance. They didnt overturn the common law but what they should do in this instance is look to other sources to figure out the generic term that means whether it is going to indicate the type of good or service. But they should not do is give the evidence that as the trademark scholars explain it is going to cause an issue in these circumstances. Only one can hold the domain name and they are going to misrepresent the number of people that actually understand the booking. Com is a business because of the way the internet works. What they stop you there for a moment. I looked at your definition and basically one definitions of booking a hotel but this service is much broader than that. You can book a hotel, travel so that may be a problem with my looking at it as generic but my point being that if i look at all the evidence points to the car booking, hotel that a finder of the fact could conclude booking. Com is in fact related to one entity and not what has become the more descriptive word then a generic phrase. This wasnt presented here indicate are no longer contesting that it is generic for the relevant class. To go to the broad point a lot of respondents examples which is to say you are always looking at the particular category for which the goods or services are being registered. Good morning. One question first, you were advocating for a categorical rule in other words you are not saying that trademarks of this kind would rarely be registered. You are saying they would never be registered, is that correct . It depends what you mean by trademarks of this kind. Booking. Com. Booking. Com and other places where the combination doesnt add any additional meaning i distinguish cases like the court of appeals where theres a sort of interplay between the two words on either side of the period. We dont think those could never provide. It isnt presented here. If it takes a less categorical position it says they would typically not identify the significance bu but doesnt say never. Why is that . Why is there a difference between what the manual says . Is a very narrow category of the cases the federal circuit and the ninth circuit have recognized. I think that the respondent would do is expand the category to say basically every generic case is going to have this kind of evidence because people acknowledge how the internet works. In the your brief, you are not making the argument that people go around talking about booking. Com. Consumers are going to understand and convey additional meaning that would distinguish the resurfaces from others, i think maybe it was. So how does that go along with the categorical role . I think to the extent that it could convey to consumer additional meaning and really the only additional meeting that its ever pointed to is the idea that it points to particular website, that i think both of an assumption all figure of the internet which we dont give trademark protection in all the competitionbased reasons i was noting earlier i think that cant be enough to get them over the line, theyve never made an argument, the succeeds between generic and descriptive terms and if its a generic term that identifies the good or service or descriptive term told you something about a future or characteristic of the service, apple pie, generic for pi but descriptive sorry to interrupt, suppose you lose on your argument on a categorical rule, is there Something Else that you would like the court to include an opinion on how to evaluate registration claims for generic. Com which is categorical in 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 . A few points, we first think the courts should follow goodyear and what goodyear said was Generic Company terms without further specification to get trademark protection, thats a rule that were asking for. Briefly. Sure, i think we would want at a bare minimum the confusion analysis on the backend to be extremely sensitive to the fact that whats driving the intuition and that equally applies to its respondents competitor. Thank you counselors, justice. I would like to follow up on that and give you another minute to continue answering that question, suppose the court does not accept your bright line rule, how would you advise the court to write an opinion that draws on employees to the sensitivity necessary in this area. A couple of points, the first even if the court did not think it controlled here as we do, they get very indicative of the right analysis in terms of the concern with monopolizing language lets put goodyear aside for the moment, i know you wanted to go there will put that aside for the moment, what would you have the court say. I would want the court to recognize as it commands, section 1052 en death that the generic terms generally are not susceptible to trademark registration based on secondary meaning and so respondent like all generic. Com would have to come forward with some evidence other than the secondary idea that its a term that tells means Online Booking agency that consumers have come to understand it is Something Else, i think wearing that description could have bad consequences outside of the. Com in the oranges and oranges inc. Where everything is now subject to survey. I want to support to make clear. I guess that leads to my next question and that is why our existing tools efficient because we do always in every case matches this area, take very seriously questions about consumer confusion and it seems like a lot of your argument on competition law policy issues is consumer confusion but the lando mack accounts for the and it seems like youre going to use for the generic term but the doctrine is designed to account for that. So why are there sufficient tools to address the concern that you raised and why isnt this just another example were intellectual property monopolization concerns, intersex and we have to respect the judgment made in this particular area. Judges corset, theres a lot in that question, my firstline intercourse is we think the tools are sufficient, they display in our direction, i think the fact that generic term cannot be trademarked even on showing secondary meaning is itself enough to resolve this. Moving on from there, you mention the risk of confusion, thickets notable that respond in their brief that we should get a trademark on booking. Com but if you booking a lot of that is because were unique, if you booking comes along, we should win within analysis because we were here first, i think its good for the goose, good for the gander if booking. Com gives trademark protection because its unique and it seems as though it should get equal protection because it too is unique. I dont think its a competition concerned are necessarily resolved under existing trademark law justice,. Thank you mr. Chief justice, good morning, respondent says theres no threat of a napoli with domain names because they are unique and they say they wouldnt in fact be concerned about you booking. Com or similar names, what are the real world practical problems that you foresee if dotcoms could obtain trademarks. Thank you, i think the real world tactical problem, one i dont agree to say that they wouldnt think you booking. Com were infringing, they go ahead and register but if it turns out there confused than we think we get the territory and you dont. I do think there is a very real risk of monopolization in that sense, other risks i think,