Experts Discuss SCOTUS on Case

Published: May 15, 2020

Peter Rosene McBrayer PLLC Louisville, Kentucky, USA INTA Bulletins Committee - North America Subcommittee

The United States Supreme Court recently heard oral arguments in United States Patent and Trademark Office v., raising the question of whether the addition of “.com” to an otherwise generic or descriptive term can together create a protectable mark. Not only is significant as a legal inquiry into the protectability of domain names, but it was the first oral argument conducted remotely before the Supreme Court in response to the COVID-19 pandemic. 

To discuss the various issues raised in, INTA hosted an online webcast on May 7, 2020, featuring various amici curiae appearing in the case. These included Thad Chaloemtiarana, Pattishall, McAuliffe, Newbury, Hilliard and Geraldson LLP (USA), counsel of record for .com brand owners and amici curiae for; Larry Nodine, Ballard Spahr LLP (USA), counsel of record for INTA and amicus curiae for; and Rebecca Tushnet, Harvard Law School (USA), counsel of record for trademark scholars as neutral amici curiae. Antonio Turco, CPST Intellectual Property (Canada), chair of the International Amicus Committee, moderated the event. 

The panel addressed several key issues in, primarily focusing on the applicability of the bright-line rule in Goodyear’s Rubber Mfg. v. Goodyear Rubber Co., 128 U.S. 598 (1888) versus the more flexible primary significance test. The Goodyear Court held that adding the word “corporation” to a descriptive mark did not make it eligible for registration. The “primary significance” test, on the other hand, evaluates generic marks on a case-by-case basis according to whether the mark is primarily identified with the goods and services or with the applicant in the minds of consumers. 

In light of the justices’ questions during oral arguments, panelists appeared to agree that there was little indication the Court favored the categorical approach found in Goodyear. Mr. Nodine opined on the growing reliance on the more flexible approach, in which consumers can and do find generic .com marks to be associated with a particular brand, as evidenced through the use of surveys. Additionally, Mr. Chaloemtiarana pointed to the fact that the primary significance test is already codified in the Lanham Act in the cancellation context. 

The panel also discussed potential consequences if the Court were to grant its registration; namely, that it would confer a de facto monopoly on the word “booking” in other Internet domain names. Citing Justice Gorsuch, Mr. Nodine dismissed this concern because obtaining a registration does not change the fact that the mark is still weak and, therefore, subject to a fair use defense. 

Mr. Chaloemtiarana and Ms. Tushnet did, however, cite potential concerns in conferring a registration for these types of .com marks upon a showing of primary significance. Chief among them are practical considerations, such as the inability of smaller .coms to show the primary significance of their mark through cost-intensive surveys, difficulties implementing the rule within the United States Patent and Trademark Office registration process, as well as proliferating infringement litigation. 

In spite of these concerns, however, Ms. Tushnet concluded that a ruling which allows otherwise generic .com marks to appear on the already crowded Register would have little effect in diminishing the persuasive value of owning a registration. We will know which position the Court takes later this year.

INTA’s amicus brief filed in the case is available here.

Interested in learning more about the hearing? Tune in to INTA’s on-demand webcast Booking.Com: A Closer Look where the Counsel of Record for various amicus briefs submitted to the Court joined the discussion and provided commentary on whether the addition by an online business of “.com” to a generic term creates a protectable trademark under the Lanham Act. This is a paid webcast, open to members and non-members. 


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