Supreme Court Hears First-Ever Telephonic Oral Argument

On May 4, 2020, the United States Supreme Court heard its first ever telephonic oral argument in its history. The case, styled United States Patent and Trademark Office v. Booking.com, B.V., addressed the issue of whether the addition of “.com” to an otherwise generic term can create a protectable trademark. Erica Ross, an Assistant to the United States Solicitor General, argued on behalf of the government and advanced the position that the addition of “.com” does not create a protectable trademark. Lisa Blatt, of Williams & Connolly LLP, argued on behalf of Booking.com and advocated the contrary position which was endorsed by the lower appellate court.

Typically, after allowing counsel a brief opportunity to provide an opening statement, the Justices will question each counsel during their respective arguments in no particular order. But given that this particular argument was conducted telephonically, the Court enacted a new protocol. Specifically, the Justices presented counsel with questions in order of seniority beginning with the Chief Justice and culminating with the most recent appointee, Justice Kavanaugh. Notably, Justice Thomas, who typically does not question counsel at argument, presented both the government’s counsel and Booking.com’s counsel with a series of questions.

As is often the case, the Court’s questions did not indicate, one way or the other, what the outcome of the case would be. With that said, the questions presented did offer some insight into at least four issues that the Court would likely consider in deciding the case.

First, the Court was interested in whether a resolution of this case would require the application of a “bright-line” rule targeting the registrability of “.com” marks. Second, the Court questioned counsel as to what role, if any, survey evidence should play in ascertaining what the primary significance of the “.com” mark is to consumers. Third, looking to other similar domains such as <ebooking.com>, the Court questioned how such domains would be affected by allowing registration of marks such as Booking.com. And fourth, how, if at all, the Court should harmonize its 132-year-old decision in Goodyear, which addressed whether generic names plus a corporate designation could receive trademark protection, with the language of the Lanham Act – passed well after Goodyear – which sets the parameters for federal trademark protection.

Indeed, the Court’s analysis, and ultimate determination, of this case will likely take into consideration the inherent nature and characteristics of the internet which were unknown both at the time Goodyear was decided and the Lanham Act was passed. Only time will tell how the Court will handle the novel issues presented by this case. We expect a decision from the Court before the end of the Court’s term this summer.

Rivkin Radler LLP was counsel of record for the New York Intellectual Property Law Association, which submitted an amicus brief in the case.