Whether adding a .com to a generic word create a name for a single entity which can be trademarked and protected from other people using it was one of the cases which was heard and discussed yesterday, Monday, May 4, 2020 by the justices of the Supreme Court of the United States…
Booking.com Trademark Case Highlighted in Historic Supreme Court Session
…and what caused this session to be historic is that — for the first time ever — the justices of the Supreme Court conducted oral arguments remotely via telephone and streamed live audio for anyone who was interested in listening in on them. The only way that members of the public were able to listen in on a session of the discussion of arguments on cases was if they waited in line for access into the court room — which is located on Capitol Hill — to actually experience being at the session.
One of the cases which was heard was Booking.com B.V. v. United States Patent & Trademark Office, petition for cert. pending, No. 18-1309, which was filed on Wednesday, April 10, 2019.
The Patent and Trademark Office of the United States refused registration of booking.com as a trademark because the term booking is a generic word and claimed that the addition of “.com” to the term did not create a mark which can be protected. A federal district court in Virginia ruled in favor of Booking.com after the company sought review of the decision; and the United States Court of Appeals for the Fourth Circuit agreed.
“It is a fundamental principle of trademark law that no party can obtain a trademark for a generic term like ‘wine,’ ‘cotton,’ or ‘grain’”, Erica L. Ross — who is an assistant to the Solicitor General at the Department of Justice of the United States who argued for the federal government on behalf of the Patent and Trademark Office — said as an introduction to the oral arguments. “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.”
Enacted by Congress in 1946, the Lanham Act provides for a national system of the registration of trademarks. Under the Lanham Act, owners of federally registered marks are protected against the use of similar marks if such use is likely to result in confusion of the consumer; or if the dilution of a famous mark is likely to occur.
One of the arguments was whether obtaining a vanity telephone number — such as 1-800-BOOKING — has any distinction from applying a trademark to a generic Uniform Resource Locator for a corporate entity simply by applying a “.com” to it.
“The more descriptive a mark is, the harder it is for that mark to show a likelihood of confusion, a requisite element in any infringement claim”, argued Lisa S. Blatt — who is an attorney with veteran experience with the Supreme Court — on behalf of Booking.com. “And so you can’t just think because ‘Wine Company’ — ‘wine’ is generic, ‘company’ is generic, ‘Wine Company’ is generic. And that’s the same, you know, with the word ‘container’ and the word ‘store.’ You put the two together. ‘Booking’ or ‘.com,’ you put the two together and you have to — you have to look at the way consumers would view that as a whole.”
Erica Ross and Lisa Blatt were the first people to test the new method for hearing oral arguments by the justices of the Supreme Court.
The oral arguments pertaining to this case — which were heard and discussed yesterday, Monday, May 4, 2020 — have been memorialized in this official transcript of 87 pages.
Summary
It is about time that the justices of the Supreme Court of the United States allowed anyone to listen in on its oral arguments while in session — and this was only possible because the current 2019 Novel Coronavirus pandemic forced the justices to conduct their session via telephone and not by meeting in person for the first time in history. This should be allowed to continue long after the pandemic is officially declared as ended.
Should Booking.com be allowed to have its Uniform Resource Locator — or URL — trademarked?
Please click here for a review of Mount Robson Lodge, which was booked through Booking.com. All photographs ©2015 and ©2017 by Brian Cohen.
