On May 4th, 2020, for the first time in history, the US Supreme Court heard oral arguments over the telephone and offered a live audio stream. In United States Patent and Trademark Office v. Booking.com, the question before the Court is whether Booking.com successfully established that it had acquired secondary meaning, which would support trademark protection for descriptive marks.
The USPTO decided that Booking.com had not acquired secondary meaning, a decision that was upheld by the Trademark Trial and Appeal Board (TTAB). The decision of the TTAB was reversed at the district court level, and the district court decision was upheld by the Federal Circuit.
Due to the unprecedented platform, the Court adopted a formal procedure under which each Justice could ask a first round of questions to each side in order of seniority, with more questions permitted at the end of the first round.
The USPTO relied on Goodyear”™s India Rubber Glove v. Goodyear Rubber Co., which held that a generic term followed by ”company” did not satisfy the requirements for a protectable term. The USPTO further argued that the Lanham Act preserves the underlying principle of Goodyear, and that because the business of Booking.com is online rather than physical, such a term could be easily monopolized and should not be provided with trademark protection.
Booking.com relied on the Lanham Act and the primary significance test to argue in favor of trademark protection, and argued that the Lanham Act abrogated Goodyear. The Lanham Act, which is the controlling federal statute for trademark law, was passed by Congress in 1946 and emphasized that whether a term acquired secondary meaning should be analyzed through the lens of consumers. Moreover, monopolization is unlikely to occur because there is no evidence that consumers would be confused about the source. Rather, trademark protection would allow Booking.com to avoid counterfeiting, fraud, and cyberpiracy.
The Justices asked questions comparing several examples of trademarks that have been allowed by current case law to ”.com” trademarks. These include 1-800 numbers and street addresses, which are both currently afforded trademark protection. The USPTO responded by stating that the anticompetitive concerns are not as serious as allowing a ”.com” trademark.
A decision by the Court is expected within the next several weeks.