May 4, 2020

Supreme Court Argument Hearings by Phone Transcript

Supreme Court Hears Arguments by Phone
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On May 4 the Supreme Court of the United States made history by hearing oral arguments by phone for the first time in its 231-year history. Read the transcript of the hearings here.

 

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Speaker 1: (02:15)
Honorable, the Chief Justice and the associate justices of the Supreme Court of the United States. Oh, yea. Oh, yea. Oh, yea. All persons having business before the honorable, the Supreme Court of the United States, are admonished to give their attention for the court is now sitting. God save the United States and this honorable court.

Chief Justice John Roberts: (02:40)
You’ll hear argument this morning in case 1,946, the United States Patent and Trademark Office versus Booking.com. Ms. Ross.

Ms. Ross: (02:52)
Mr. Chief Justice, and may it please the court, it is a fundamental principle of trademark law that no party obtain a trademark for a generic term like wine, cotton, or grain. 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. In other words, secondary meaning or acquired distinctiveness is simply irrelevant to generic terms. That principal controls here. It is undisputed that booking is generic for the hotel reservation services respondent provides. Respondent thus could not federally register booking nor could respondent register booking company or booking inc. In Goodyear, this court held that the mere addition of an entity designation like company or inc to an unprotectable term does not create a protectable mark. That is because those terms indicate only that parties have formed an association or partnership to deal in the relevant goods. By prohibiting a first adopter from obtaining a trademark on a phrase like booking inc, Goodyear ensured that no party can monopolize a generic term.

Ms. Ross: (04:06)
The same results should apply to Booking.com. The addition of dot com is the online equivalent of company or inc. It conveys only the respondent provides its services via a commercial website on the internet. There is no sound reason for respondent to be able to federally register Booking.com as a trademark when it couldn’t register booking inc. Registration would effectively give respondent a monopoly on the words booking. com and would interfere with competitor’s ability to use similar domain names.

Ms. Ross: (04:34)
That’s particularly problematic because of how the internet works. Only one entity can obtain the contractual rights to a domain name at a time. So, respondent already enjoys significant competitive advantages to brick and mortar equivalents, like booking inc, would lack. That same feature of the internet also means that, if respondent’s survey evidence is enough to obtain federal trademark registration, then nearly every generic dot com business can do the same. Because domain names are one of a kind, a significant portion of the public will always understand a generic dot com term to refer to a specific business, even if it is not familiar with the particular business at issue

Chief Justice John Roberts: (05:14)
Counsel, you mentioned the Goodyear case, but you did not quote the language from the trademark statute that is at issue here. That language says that the primary significance of the mark to the public shall be the test for determining whether the mark has become… had a different test, an 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 that Congress chose in the statute, rather than a 130 year old case of ours.

Ms. Ross: (06:08)
So, Mr. Chief Justice, two points on that. The first is that the Lanham Act actually preserves a distinction between generic and descriptive terms. And so, generic terms it confirms, and this is both in the definitional provision and then again in section 10 25 ENF or 10 52, excuse me, ENF confirms that generic terms are never susceptible to trademark registration even when they acquire secondary meaning. And descriptive terms, merely descriptive terms, may acquire a trademark significance when they acquire secondary meaning. So, I think the Lanham Act preserves sort of the underlying principle of Goodyear.

Ms. Ross: (06:47)
Now, moving to section 10 643 specifically, the cancellation provision that you note, that’s on page 11A of our appendix. It says, the primary significance of the registered mark to the relevant public, rather than purchaser motivation, shall be the test for determining whether the registered mark has become the generic name of goods or services. I think it’s significant here that that provision was enacted in 1984. Respondent has pointed to no case and no source before its own brief suggesting that it overturned this court’s decision in Goodyear.

Chief Justice John Roberts: (07:18)
It was enacted in 1984, but that’s a lot closer to today than the Goodyear case, which was 130 years ago. So, I don’t know why we would focus more on the statutory language in that old case. But more to the point may be that, if this is a generic term, Booking.com, that means that it describes a category of goods or services. But, when you talk about other companies in that category, whether it’s Travelocity, Priceline, or whatever, nobody refers to those as booking.coms. Booking.com is not a generic term to describe that type of service.

Ms. Ross: (08:11)
So, again, a few points on that, Mr. Chief Justice. The first is that we agree that in the ordinary case, one might use the term generic to refer or to understand it how the consumers generally refer to a class of goods. But I think it can also be used, as this court’s division in Goodyear used it, for how a specific entity or how the public would understand a specific term. So, for example, in Goodyear the court held that Goodyear Inc. could not be… or wine Inc., for example, could not be trademarked. And that’s true even though nobody refers to a glass of wine incorporated. The point here is that the distinction-

Chief Justice John Roberts: (08:49)
Thank you. Thank you, counsel. Justice Thomas?

Justice Clarence Thomas : (08:53)
Yes. Ms. Ross, a couple of questions. Could Booking acquire an 800 number that’s a vanity number, 1-800-BOOKING, for example, that is similar to 1-800-PLUMBING, which is a registered mark?

Ms. Ross: (09:17)
So, Justice Thomas, under the federal circuit’s decisions, yes it could. Those decisions, I think, are sort of debatable under Goodyear and the principles that we think control here, but the federal circuit, the PTO rather does follow those decisions because of the right of direct appeal to the federal circuit from PTO decisions. Now, I think it’s significant that those are distinguishable in the sense that the core problem with Booking.com is that it allows respondent to monopolize booking on the internet because of the fact that longer domain names of respondents, competitors like eBooking.com and Hotelbooking.com can include booking.com. That is not as obviously true of something like 1-800-BOOKING.

Justice Clarence Thomas : (09:56)
Well, that could be true. But I’d like you to compare this to Goodyear. In Goodyear, you had a generic term, but you also had an added term, such as company or inc, which any company could use. Now, with a booking here, there can only be one domain address dot com. So, this would seem to be more analogous to the 1-800 numbers, which are also individualized.

Ms. Ross: (10:38)
So, your honor, you’re completely correct that only one internet entity at a time can hold the domain name rights to Booking.com. I think that actually works in our favor rather than respondents for a few reasons. The first is that respondent doesn’t actually argue that every domain name should get a trademark, as I think would be the consequence of your honor’s position there. I think the reason that respondent doesn’t do that, again, is because if that’s good for respondent, then it’s good for eBooking.com and Hotelbooking.com. And then, I think the risk of confusion analysis on the backend would also have to account for the fact that each of those is unique. And so, respondent would wind up with a very thin trademark protection.

Ms. Ross: (11:15)
Putting that to one side, in the usual case of trademark, what a registrant wants is the ability both to exclude others from using the same name and to exclude others from using names that are confusingly similar. Because of the functional nature of the internet, respondent already has that first advantage. So, others can’t use Booking.com online. And their competitors won’t want to use those terms in their promotional materials because that will direct customers to respondent’s website rather than their own.

Ms. Ross: (11:46)
So, the point here, and this is why generic .com terms garner so much money on the internet. The point, I think, of this case, what really matters is the second type of usage, the ability to block out competitors like eBooking.com and HotelBooking. com. And I think that’s exactly the type of anti-competitive concern that this court expressed in Goodyear. That, if you allow one company to have a booking inc or booking company, it’s going to preclude others from calling their goods by their name and from marketing themselves as what they are.

Ms. Ross: (12:16)
Now, I think Judge [inaudible 00:12:18] explained this very well in the court of appeals defense, so pages 28A to 29A of our appendix. What respondent wants here is something it couldn’t get in the brick and mortar world. So, usually we require businesses to decide whether to adopt a generic name upfront. And that allows them to get easy recognition from consumers who automatically understand what they sell, but we don’t allow-

Ms. Ross: (12:42)
Thank you, counsel. Thank you, counsel. Justice Ginsburg?

Justice Ruth Bader Ginsburg: (12:46)
Two questions. First question is, if you’re right, that dot com doesn’t make a generic term non generic, how many marks, already registered marks, would be subject to cancellation? I take it there are dozens of dot coms that have been registered. Is that so?

Ms. Ross: (13:15)
So, Justice Ginsberg, I think respondent suggest that there are far more than there actually are, if I could make just a few points on this. The first is that the TTAB, which is how the PTO speaks precedentially, has been consistent on this point. And the examiner decisions in our appendix, as well as the courts of appeals other than the court below. So, by and large, our rule is being followed out in the world. So, I don’t think that there is going to be this huge change.

Ms. Ross: (13:38)
Now, respondent does point to some examples, but I think those examples show a few flaws. One of those flaws is that respondent seems to think that on our rule, the combination of any two nouns or any noun and an entity designation is always going to be generic. That’s simply not true. You always have to look at how the two terms are being used. So, for example, respondent looks to Cheesecake Factory. But, of course, that’s not a literal factory producing cheesecakes. It’s a restaurant. So, I don’t think Cheesecake Factory-

Justice Ruth Bader Ginsburg: (14:06)
I wanted you to focus on cancellation. Who could apply to cancel an existing registration?

Ms. Ross: (14:16)
So, I do believe-

Justice Ruth Bader Ginsburg: (14:19)
If we rule in your favor, would the PTO itself endeavor to cancel these marks?

Ms. Ross: (14:28)
I don’t believe so, your honor. I think that competitors could, under section 10 64, file petitions to cancel registration. And, of course, the fact that it was generic would allow registration, or excuse me, cancellation at any point. Now, I think that those same entities could have brought cases previously based on, again, the binding law of the federal circuit and the TTAB, which is and was consistent on this point. So again, I think, because respondent’s appendix sort of greatly overstates the number of marks that actually have been incorrectly registered, we don’t have a fear that there will be a huge backlash if the rules change. And to explain a little bit more why I think that’s so, respondent points to not just examples like Cheesecake… I’m sorry.

Justice Ruth Bader Ginsburg: (15:16)
I have another question I wanted to ask you. And it’s a followup to Justice Thomas. Your answer to the telephone number of question, 1-800- BOOKING, was, well, that’s the federal circuit.

Ms. Ross: (15:35)
Have a fear that there will be a huge backlash if the rules change. And to explain a little bit more why I think that’s so, respondent points to not just examples like Cheesecake… I’m sorry.

Justice Ruth Bader Ginsburg: (15:46)
I have another question I wanted to ask you. And it’s a followup to Justice Thomas. Your answer to the telephone number question, 1-800-BOOKING was, well, that’s the federal circuit precedent. But it would be our job in this case to deal with that, if the federal circuit is wrong. Do you have another distinction with the 1-800, say mattress or booking that would distinguish it from the domain name?

Ms. Ross: (16:27)
Yes, Justice Ginsburg. So, I think the other distinction is that, again, Booking.com can be encapsulated in longer domain names in a way that 1-800-BOOKING or booking itself really couldn’t be in longer phone numbers. So, there is a sort of defacto reason why the same competitive risks aren’t there. I think it’s also worth taking a step back.

Chief Justice John Roberts: (16:50)
Thank you, counsel. Thank you, counsel. Justice Breyer?

Justice Stephen Breyer: (16:53)
Same question as Justice Thomas’s question. Good morning, anyway. Justice Thomas’s question, Justice Ginsburg, what do you want to say about that? You can have a trial trademark that’s a dot com.

Ms. Ross: (17:16)
So, again, Justice Breyer, and good morning, I think that it is clear from Goodyear that Goodyear balances these competing objectives that are always true in trademark law in this very similar context of booking company. We think booking company and Booking.com are essentially equivalent. All Booking.com tells you is that there is a website on the internet for booking. It tells you it’s a they type of service that’s sort of a classic, generic usage. And we think that that follows from Goodyear.

Ms. Ross: (17:45)
Now Goodyear, as I was saying, sort of balance these two competing interests. On the one hand, we want to make sure that consumers understand that’s a good they got last time. It’s from a particular brand. And so, we want strong brand identification. And we protect trademarks for that reason. On the other hand, we want to avoid monopolization of language. And I think that’s exactly the concern that Goodyear had with Booking.com… or excuse me, with booking company and booking inc, or wine company, in grain company, in grain inc in the words of Goodyear. And it’s exactly the same concern that we have on the internet here because, again, by using Booking.com and by getting a trademark on Booking.com, respondent necessarily must want to be able to block out eBooking.com, and HotelBooking.com, and similar names.

Ms. Ross: (18:29)
I think, again, because responding couldn’t do that in the brick and mortar world, there’s no reason why it should be allowed to do it on the internet. Now, you noted that you could have sort of a street address as a trademark, but I think that’s fundamentally different because, of course, that’s not telling you anything at all about the services. So, the registrant there would still have to work to build up its brand recognition in the same way that a person who uses an inherently distinctive mark like Amazon has to do. They don’t get this sort of upfront benefit from using a generic term where everyone now knows that they provide, in respondent’s case, online booking services. And all of the concomitant benefits on the internet that go with that, such as again the fact that other competitors can’t use that name, and that consumers will go to Booking.com expecting that to be a site for online booking, even if there’s no particular knowledge on the part of the consumer about that website.

Chief Justice John Roberts: (19:28)
Thank you. Justice Alito?

Justice Samuel Alito: (19:35)
What do you think I should do if I think that Goodyear is a case from a different era and doesn’t control here, but also think that the Lanham Act similarly was enacted in a different era, namely in the pre-internet era, and that the case law in which Ms. Blatt realize belongs to that era? How can a rule that makes sense in the internet age be reconciled with the language of the Lanham Act?

Ms. Ross: (20:14)
So, I think, Justice Alito, it’s pretty easily reconcilable with the Lanham Act. And I want to go back to the Chief Justice’s first question about the primary significance test. Again, the primary significance test is sort of cabined necessarily, in the statute at least, to cancellation of a mark that was already considered distinctive. So, this comes up in cases like Teflon, and Kodak, and things where it’s a coined term. And so, as respondent concedes in their brief, it’s a very narrow rule. In 1984, Congress passed this amendment to overturning specific ninth circuit case, but had applied to different tests in the cancellation context. Now, it is true that other courts have applied similar analysis in other places, but that’s because of the preexisting common law. So, for that reason, we think Goodyear continues to control for the same reason that this other preexisting common law does.

Ms. Ross: (21:03)
Goodyear continues to control for the same reason that this other preexisting common law does. But even taking these sort of outside of Goodyear, as I take your question to suggest, even without Goodyear you have this very basic trademark policy that has always been true, which is that generic terms simply are not susceptible to appropriation by a particular business even when there are secondary meanings. This court recognized that in two cases following the Lanham Act, citing Judge Friendly’s quintessential sort of categories of terms. And I think it remains true on the internet, and to a certain degree is true in the brick and mortar world.

Ms. Ross: (21:32)
Again, I think trademark is always trying to make this balance between competition and brand recognition on the one hand and fear of monopolization on the other. And I think the fear of monopolization side here really speaks very strongly to our position because again, our Respondent’s view would allow them to monopolize any term. I think it’s worth noting on pages six and eight of Respondent’s brief, their test actually requires them, I think to hedge as to whether the words oranges or oranges, inc., or I presume oranges.com would be generic. So on their view, oranges remains generic if and only if a survey shows that the public continues to think of that as “the spherical fruit of the same color.” I think that would be a surprising outcome under trademark law whether in the brick and mortar world or on the internet.

Ms. Ross: (22:26)
Now, the other point that Respondent makes with respect to the codification of the primary significance test, I don’t think it’s actually the primary significance test that’s the core of Respondent’s argument. Respondent’s argument is much more that that test must always and in all circumstance requires looking to survey evidence and giving that survey evidence dispositive weight. I think that’s not true under Goodyear, which I think is wholly reconcilable with the primary significance test because Goodyear itself, on page 602 of the opinion, rejected evidence as legally irrelevant that one particular defendant had sort of the best claim to public association. Again, that’s consistent with the Lanham Act and section-

Chief Justice John Roberts: (23:07)
Justice Sotomayor? Justice Sotomayor?

Justice Sotomayor: (23:21)
I’m sorry, Chief. Ms. Ross? Picking up on where you were right now, is it your position that the primary significance test to the public is never to be used in determining what’s generic and what’s not? Or is it … And if we don’t use that test at least in whole or in part however much you want, what other things would a PTO examiner look to?

Ms. Ross: (23:53)
Justice Sotomayor, it’s not our position that the courts and the PTO can never look to the primary significance test outside of cancellation. Again, I think that the reason why courts and the PTO do that is because the Lanham Act didn’t overturn preexisting common law and that again speaks to why we think Goodyear remains good law. But I think what courts should do in this instance is look to other sources to figure out what again, a generic term, whether something is a generic term, which usually means whether it is going to indicate the type of good or service. So, dictionary definitions are very helpful in this regard. The use by other competitors, like again hotelbooking. com and ebooking.com here, and similar sources.

Ms. Ross: (24:34)
What I think you should, what courts and the PTO shouldn’t do is give dispositive weight to survey evidence that, as the Trademark Scholars brief by Professor [Tushnet 00:24:44] explains, is going to cause some issues in these particular circumstances. So again, because of the functional nature of the internet, because everyone understands that a certain … that only one entity at a time controls the domain name booking.com, surveys are going to misrepresent the number of people who actually understand that booking.com is a business as opposed to only infer that because of the way the internet works. Now, I think-

Justice Sotomayor: (25:09)
Ms. Ross, may I [crosstalk 00:25:11] … Ms. Ross, may I? Let me stop you there for a moment. I looked at your definitions of booking and it basically, one definition said booking a hotel, but this service is much broader than that. You can book a hotel, you can book leisure, you can book travel, you can book cars. So, that may be a problem with my looking at booking as generic. But my point being that if I look at all the evidence you point to, e-booking, car booking, hotel booking, that a finder of fact could well conclude that booking.com is in fact related to one entity and not to a … has become more a descriptive word than a generic phrase.

Ms. Ross: (26:16)
Justice Sotomayor, I think that’s both not presented here and I disagree on the merits. So, I think it’s not presented here in that Respondent has acknowledged is no longer contesting that booking is generic for the relevant class of services here, and not the hotel, the online hotel reservation services. To go to your broader point, I think this actually speaks to the problem with a lot of Respondent’s examples, which is to say you’re always looking at the particular category and the particular for which the goods or services are being registered and the usage. Now on this idea that while media-

Chief Justice John Roberts: (26:51)
Thank you, Counsel. Justice Kagan?

Justice Kagan: (26:55)
Good morning, Ms. Ross. One short question first. I’m right in saying that you’re advocating for a categorical rule here, am I not? In other words, you’re not saying that trademarks of this kind will rarely be registrable. You’re saying that they will never be registrable. Is that correct?

Ms. Ross: (27:14)
I think it depends a little bit, Justice Kagan, on what you mean by trademarks of this kind. We think that when you’re simply appending dotcom-

Justice Kagan: (27:21)
Yeah, dotcom. Booking.com. Booking.com.

Ms. Ross: (27:24)
Sure. So, booking.com and other phrases where the combination doesn’t add any additional meanings. I need to distinguish cases like the courts of appeals have hypothesized, like tennis.net, where there’s sort of an interplay between the two words on either side of the period. We don’t think that those could necessarily never provide for trademark protection. We just don’t think that’s really presented here, but in the [crosstalk 00:27:49]-

Justice Kagan: (27:49)
Is that why … The PTO takes a much less categorical position. It says, “Well, those dotcoms will typically not add source identifying significance.” But it doesn’t say never. Why is that? Why is there a difference between what the PTO examiner’s manual says and what you say?

Ms. Ross: (28:10)
So, I don’t think there actually is a difference, Justice Kagan. I think what the PTO is leaving open again is this category, this very narrow category of rare cases that the Federal Circuit and the Ninth Circuit have recognized. I think what Respondent would do is to expand that category. I mean, Respondent has tried to say that this is sort of the rare case. But as I was explaining earlier, I think basically every generic dotcom case is going to have this type of evidence because of people’s knowledge of how the internet works. So, I think [crosstalk 00:28:39]-

Justice Kagan: (28:40)
In your brief, you say you’re not making the argument that people go around talking about booking.com, but you’re instead saying that booking.com is generic, and this is on page 44 of your brief, because customers would understand the term to convey only that the company provides online booking services and the term conveys no additional meanings that would distinguish Respondent’s services from those of other providers. And I guess when I think about that test, I think, “Well, maybe or maybe not.” If the test is what you say, is what is a consumer going to understand and does the term convey additional meaning that would distinguish the Respondent’s services from others, I kind of think, “Well, maybe it would.” Well, so how does that test go along with a categorical rule?

Ms. Ross: (29:32)
So, I think, Justice Kagan, to the extent that you think it could convey to consumers some additional meaning, that additional meaning, and really the only additional meaning that Respondent has ever pointed to is this idea that it points you to a particular website. So, that I think, both because it’s a functional feature of the internet to which we don’t usually give trademark protection, and for all of the competition-based reasons I was noting earlier, I think that can’t be enough to get them over the line. They’ve never made an argument. Again, the sort of the key distinction between generic and descriptive terms is that a generic term identifies the type of good or service, whereas a descriptive term tells you something about a feature or characteristic of the service. So for example, apple pie, generic for pies, but descriptive for rooms [crosstalk 00:00:30:16]-

Justice Kagan: (30:17)
Sorry to interrupt. Suppose, Ms. Ross, that you lose on your argument on a categorical rule, is there something else that you would like the court to include in an opinion about how to evaluate registration claims for generic dotcom marks? In other words, if categorical is a bridge too far, is there something else that we should be thinking about in terms of saying when it is that generic marks are registerable?

Ms. Ross: (30:46)
So a few points, your Honor. I think first we obviously think that the court should follow Goodyear, and so I think what Goodyear said was that generic company terms “without further specification won’t be enough to get trademark protection.” I think that that is essentially the rule that we’re asking for here-

Justice Kagan: (31:03)
[crosstalk 00:31:03] I think not.

Chief Justice John Roberts: (31:04)
Briefly, Ms. Ross.

Ms. Ross: (31:06)
Sure. I think we would want, at a bare minimum, the risk of confusion analysis on the back-end to be extremely sensitive to the fact that what’s driving the intuition is the uniqueness of the domain name and so that equally applies to Respondent’s competitors.

Chief Justice John Roberts: (31:22)
Thank you, Counsel. Justice Gorsuch?

Justice Gorsuch: (31:24)
Yes, I’d like to follow up on that and just 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 write an opinion that draws on and points to this sensitivity necessary in this area?

Ms. Ross: (31:47)
Sure. So, a couple of points, Justice Gorsuch. The first is that I think again, even if the court did not think that Goodyear [inaudible 00:31:54] controlled here, as we do, I think it is very indicative of the right type of analysis in terms of the concern with monopolizing language. As I was saying earlier, I think-

Justice Gorsuch: (32:04)
Let’s put Goodyear aside for the moment, okay? Again, I know you want us to go there but put that aside for the moment. What would you have the court say?

Ms. Ross: (32:12)
Certainly. So, I would want the court to recognize as the Lanham Act, I think, commands again in sections 1052 E and F, that generic terms generally are not susceptible to trademark registration based on secondary meaning. And so Respondent, like all generic dotcoms would have to come forward with some evidence other than simply this secondary idea that yes, this is a term that just tells me that it’s an online booking agency but consumers have come to understand it as something else. I think blurring that distinction could have really bad consequences outside of the dotcom context. So again, the oranges or oranges incorporated example where everything is now subject to survey evidence. So, I would want the court to make clear-

Justice Gorsuch: (32:57)
I guess that that leads to my next question and that is why aren’t existing doctrinal tools under the Lanham Act sufficient? Because we do always in every case, not just this area, would take very seriously questions about consumer confusion. And it seems to me a lot of your argument on competition law policy issues is concerned with consumer confusion, but the Lanham Act accounts for that. And then it seems like you’re also concerned about the use of a generic term, but fair use doctrine is designed to account for that. So, why aren’t there sufficient doctrinal tools to address the concern, the competition law concerns you’ve raised and why isn’t this just another example of where intellectual property and monopolization concerns intersect and we have to respect the judgment Congress made in this particular area?

Ms. Ross: (33:56)
So, Justice Gorsuch, there’s a lot in that question. I think that my first line answer of course, is that we think that the tools are sufficient, they just point in our direction. Now, I think that the fact that generic terms can’t be trademarked even upon a showing of secondary meaning under the Lanham Act is itself enough to resolve this case. Now, moving on from there, you mentioned the risk of confusion analysis. I think it’s notable that Respondent in their brief says we should get a trademark on booking.com but if ebooking.com comes … And a large part of that is because we’re unique. But if ebooking.com comes along, we should win in a risk of confusion analysis because we were here first. I think if it’s sort of good for the goose, good for the gander. If booking.com gets trademark protection because it’s unique, then it seems as though ebooking.com should get equal protection because it too is unique. So, I don’t think that sort of the competition concerns are necessarily resolved under existing trademark law. I think you would actually have to-

Chief Justice John Roberts: (34:53)
Thank you, Counsel. Justice Kavanaugh?

Justice Kavanaugh: (34:57)
Thank you, Mr. Chief Justice. Good morning, Ms. Ross. Respondent says there’s no threat of monopoly with domain names because they’re unique and they say they wouldn’t in fact be concerned about ebooking.com or similar names in their brief. So, what are the real world practical problems you foresee if dotcoms could obtain trademarks?

Ms. Ross: (35:27)
Thank you, Justice Kavanaugh. So again, I think the real world practical problem is one, I don’t read Respondent actually to say that they wouldn’t think that ebooking.com were infringing. They say, “Sure, go ahead and register it. But if it turns out consumers are confused, then we think we get the territory and you don’t.” So, I do think there is a very real risk of a monopolization in that sense. The other risk though, I think is that Respondent is already getting, as I mentioned earlier, these huge first mover advantages from the fact that it and only it can control booking.com on the internet. And so it is asking for this privilege that no business would have in the real world of both getting the really exacerbated first mover advantages of using a generic name and then also getting the back-end trademark protection.

Ms. Ross: (36:12)
And I guess I don’t see why the internet context should permit that, again, given that it already gives Respondent these huge advantages. I also think this is sort of a maybe a lesser level, but if it’s true that booking.com and presumably every other trademark or excuse me, every other domain name can get a trademark, then you’re going to have this problem where the trademark system is basically becoming a domain name registry system. It’s just duplicative of that. And I’m not sure why, rather than following sort of bedrock trademark principles like a generic term can’t get trademark protection, no booking company, therefore no booking.com, the court would go in that direction of essentially just having a quasi DNR for internet generic dotcom names.

Justice Kavanaugh: (36:58)
Respondent also points out that there’ve been registrations of booking.com in other countries, the EU, the United Kingdom. Can you respond to that?

Ms. Ross: (37:12)
Sure, Justice Kavanaugh. I think that may well be true. I don’t think it’s particularly relevant here. Obviously those other countries aren’t focusing or aren’t constrained by Goodyear as we think this court is, and they’re not constrained by the Lanham Act as we think this court is. And obviously again, I think the Lanham Act preserved that core understanding of Goodyear, which is no company can obtain a trademark on a generic term even if it shows that the public has come to associate it with its good. That’s all Respondent has argued for here.

Justice Kavanaugh: (37:43)
Thank you.

Chief Justice John Roberts: (37:46)
Ms. Ross, why don’t you take a minute to wrap up?

Ms. Ross: (37:50)
Sure. Thank you. Mr. Chief Justice. I think our basic points are simple. We think our rule flows directly from Goodyear. Dotcom is simply the online version of company and it tells you only that Respondent operates a commercial website via the internet where bookings can be made. We think it’s consistent with the Lanham Act’s preservation of this distinction between generic and descriptive terms and with longstanding trademark policy. Respondent’s rule by contrast would require overturning Goodyear, blurring the Lanham Act’s line between generic and descriptive marks, and permitting the monopolization of generic terms online. And for all of those reasons, we would respectfully ask that the court reverse.

Chief Justice John Roberts: (38:27)
Thank you, Counsel. Ms. Blatt?

Ms. Blatt: (38:32)
Thank you, Mr. Chief Justice and may it please the court. This case is about how to tell the difference between descriptive names the Lanham Act protects and generic ones Act does not. The three reasons this court should hold that the answer is the primary significance test. That is whether consumers primarily think the name is a genus or a potential brand. First, the Act mandates this test. Second, the Act abrogated Goodyear, and third, this test furthers the statutory purpose to let consumers decide which marks deserve trademark protection.

Ms. Blatt: (39:04)
First, the text. The Act has always required in sections 1052, 1091 and 1127, trademark registration if a mark helps consumers distinguish among brands. In other words, the Act protects descriptive names which consumers find useful, but it excludes generic ones, which consumers think just refer to a genus. The Lanham Act has codified the law of unfair competition, which had protected descriptive but not generic names.

Ms. Blatt: (39:32)
And right before Congress passed the Act, this court in Kellogg adopted the primary significance test under unfair competition law to distinguish between generic and descriptive names. For the past 70 years, courts have embraced this primary significance test to tell the difference under the Lanham Act, and it was against this universal backdrop that Congress later codified the primary significance test in sections 1064 to overrule a decision departing from this test in the cancellation context. 1064 that’s reflects Congress’s ratification of the primary significance test to define a generic name in all context.

Ms. Blatt: (40:09)
The government has no other tests for the dividing line other than primary significance. Second, Goodyear did not survive the Lanham Act. The Act repudiates root to branch any per se rule that an island of words are generic as a matter of law, regardless of consumers’ views. First, sections 1052, 1091 and 1127 necessarily define generic names as ones that do not help consumers distinguish among brands because everything else must be registered. And the factual question about what consumers think is the antithesis of a per se rule.

Chief Justice John Roberts: (40:51)
Okay, thank you, Counsel. You rely heavily on the primary significance test, but that is only in the provision of the statute dealing with cancellation of marks. And of course this is not a cancellation case, it’s a registration case. So, why should we assume that the primary significance test carries the weight that you would give it?

Ms. Blatt: (41:14)
Sure. So, like I just said, the 1064 we think is a ratification of the law as if you were looking at the defining line between what’s a generic term and what’s a descriptive term. And the specific amendment was to overrule a decision that had come up in the cancellation context. So, it was targeted to that Ninth Circuit anti-monopoly case. In terms of the primary significance test though, if you ignore section 1064, there is still no other test than other than one that looks to what consumers think of the mark. Because three provisions, regardless of 1064, require registration of marks that help consumers distinguish among brands. So-

Chief Justice John Roberts: (41:59)
So, maybe one reason that Congress put this in the cancellation section and not-

Chief Justice John Roberts: (42:03)
One reason that Congress put this in the cancellation section and not in the registration section is because they appreciated the significance of Goodyear with respect to registration of marks.

Ms. Blatt: (42:12)
I don’t think that can be right because again Goodyear is a common law rule. Let’s just talk about Goodyear. Goodyear is a common law rule that is based on the principle under common law that no mark could be trademarked if competitors could with equal truth hypothetically say that about the mark. And so Goodyear, by its terms, interchangeably uses the word generic and descriptive marks. And that was true because common law didn’t care. Both were off limits. And so the court in Goodyear specifically said wine company is no different than Lackawanna coal and Pennsylvania wheat, which are descriptive terms. And the court said both are off limits. At this court in five, five cases, at the time right after Goodyear, described Goodyear as not only a case about descriptive terms, but two cases, Lord’s manufacturing and PD Beckwith, which are cited on page 28 of the government’s brief but an equal truth principle. And that’s where the government, I think it didn’t mean to, but it basically says booking does not deserve a trademark because everyone with equal truth could be a booking company. And we know-

Chief Justice John Roberts: (43:24)
There are a lot of companies that use booking in their second level domain, ebooking.com, hotelbooking.com, Eurobookings.com, travelbooking.com. If you succeed in trademarking booking.com, then these competitors will be impeded from using that term, which is an accurate description of the services and goods that they provide.

Ms. Blatt: (43:55)
So I think that’s correct.

Chief Justice John Roberts: (43:57)
Is that something that we should take into consideration?

Ms. Blatt: (43:59)
Sure. And like you should take into consideration with all marks that are descriptive. I mean our bottom line position is that .com mark should be treated the same. But there are three reasons why you shouldn’t worry about what the government’s, their sort of concerns about anti monopolization. First, the concerns are just in a brief, they don’t give you a single, not a single example of harm, despite the ubiquity of generic word.com marks and the fact that booking.com is registered in 85 other countries including ones-

Chief Justice John Roberts: (44:31)
Quickly note what your second and third reasons are.

Ms. Blatt: (44:34)
Yeah, so let me get to the third reason, which I think is the legal reason in terms of why it doesn’t crowd out. 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.

Chief Justice John Roberts: (44:49)
Thank you counsel. Justice Thomas.

Justice Thomas: (44:52)
Thank you chief. Just getting back to the chief’s question, Ms. Blatt, you seem to rely almost exclusively on the primary significance test. Do you need that test in order to prevail here?

Ms. Blatt: (45:11)
No. Because regardless of what you think of our test, the government can’t be right because three statutory provisions that don’t mention primary significance tests overrule, repudiate, abrigate and completely eradicate any notion that you could have a per se rule that would ignore what consumers think, which is why the Gordon Qualitex didn’t meet some primary significance test. It just said you don’t have the common law per se bar against trademarking colors. It’s just a factual question about what consumers think. Do they find the mark useful? And so we went under three provisions. I think the other problem, even putting aside those three provisions, justice Thomas, is that there’s a whole separate problem the government has that there are two provisions that require courts to look to how consumers would view the mark as a whole and not as component parts.

Ms. Blatt: (46:02)
And so you can’t just think because wine is generic, company is generic, wine company is generic. And that’s the same 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 look at the way consumers would view that as a whole. That also abrigates a per se rule. So you don’t even need to mention primary significance to know that the government is wrong. It just so happens that every court has always said the primary significance test governs. The PTO’s manual says it. It’s the test that was applied in this case. And if I could turn to something that I think is pretty devastating for the government is their appendix. Their appendix of projected marks is not based on Goodyear. It’s based on the primary significance test.

Ms. Blatt: (46:50)
Go look at the records in ad.com, bedandbreakfast.com, bookkeeping.com, limousine.com, newspaperarchive.com. There’s no Goodyear. It’s the primary significance that looks at extensive evidentiary record about how consumers would perceive the mark. Now our appendix is not, it’s the same. It’s not based on mistakes. Weather.com, tickets.com, dating.com, wrestlingfigures.com and another bed and breakfast mark. The PTO looked at extensive evidence. It wasn’t some lazy PTO officer. It was someone looking at the primary significance test and saw, wow. I’m seeing that consumers really see weather.com as distinctive. It deserves registration. So the status quo is the primary significance test, and that’s what has been, I think this also should give the chief and justice Thomas some comfort that most marks flunk the primary significance test, but some don’t.

Justice Thomas: (47:46)
So the government relies on Goodyear. And you say that of course there’s been a sea change in trademark law since Goodyear, particularly with the Lanham Act. Would you just explain briefly how you think the Lanham Act has expanded the trademark law and what is protected and what is not protected?

Ms. Blatt: (48:10)
Sure Justice Thomas. So it’s a basic overhaul in the sense that, and again, these are these five Supreme court cases that are cited on pages 37 and 38 of our brief, and all the old chestnuts, Elgin and canal company. These are famous trademark cases that are all about the bar on descriptive marks. You cannot, could not, may not trademark Lackawanna coal or Pennsylvania wheat or Elgin watch or whatever the typewriter was in the how case. You just can’t do it because everybody has an equal right to say they have that particular characteristic or that-

Chief Justice John Roberts: (48:48)
Thank you, Ms. Blatt. Justice Ginsburg.

Justice Ruth Bader Ginsburg: (48:53)
If you have the same name, Ms. Blatt, then the consumers will know that the word .com will get you particular sauce. Not all sellers of a given commodity, but one particular sauce. And yet you don’t argue that generic.com is always potentially trademarkable. So when will the generic.com remain generic?

Ms. Blatt: (49:27)
So in terms of when it flunks the primary significance test. In addition, I can talk, I’ll give you some examples, but the sites that I gave you from the government appendix are good examples of how generic word.com marks flunk it. But let’s look at, there’s several examples, so in our survey, an overwhelming majority found that washingmachines.com were generic, and yet an overwhelming majority found that booking.com referred to the travel website that’s used around the globe. Another example that’s sort of a common sense example I can give you is that sometimes people think of genericword.coms generically.

Ms. Blatt: (50:05)
I have searched every grocerystore.com looking for toilet paper. I have now started looking at every hardware.com. I am using fooddelivery.com for all of my takeouts these days. Those are generic usages of a genericword.com. And I think the examples on the PTO’s database versus our examples just show you where, and let me just correct for the record here about survey evidence. Survey evidence is never dispositive. You always look at any and all relevant evidence about consumer usages. And if there’s evidence from newspapers, consumer surveys, dictionaries, trade journals that give you reason to suspect a survey is either unreliable or just you don’t have to credit it, then don’t credit it. Then the generic.com mark loses as a factual matter because the evidence is otherwise overwhelming that the mark flunks the primary significance test. It’s just here the government dropped, it tried to argue the survey was unreliable, but it waived that in the court of appeals. And the district court said, I’m not just relying on the survey, I’m relying on all the evidence about booking.com and the lack of PTO’s evidence, but other cases will turn out differently.

Justice Ruth Bader Ginsburg: (51:21)
And I ask you another question. And that is if passing off another services as your service is what you’re really concerned about, why does an unfair competition law afford you adequate protection?

Ms. Blatt: (51:40)
So mainly the reason is because we’re a business, we want the same competitive rights that every other travel agency has to federal registration. But specifically .com marks need sections 11, 25 D and D2 in particular because it allows in REM proceeding. So if you have a cyber scam, they largely arise overseas and the person is beyond the jurisdiction of the US courts. And what the Lanham Act does, if you’re a trademark, it allows you to sue the domain name and basically shut it down. And spoofing, type of squatting and all these other cyber scams are prevalent on the internet. But I do think even if you didn’t have the internet specific reasons, they’re not second class citizens. They deserve the same trademark registration rights as any other company to protect against outright counterfeiting and infringement.

Chief Justice John Roberts: (52:37)
Thank you counsel. Justice Breyer.

Justice Brier: (52:41)
Thank you. [inaudible 00:52:47] Directing your attention to is Professor Terstat’s brief and McCarthy on trademark, which is against your position. [inaudible 00:52:56] It’s a combination of four things. One, the trademark law is supposed to give the company the advantage that grows out of a commercial identification. It’s not supposed to create monopoly power or market power beyond that. Here, the power of the trademark, your trademark, is exactly growing out of the fact that everybody knows there’s one comm with one name. And if you can do it in the future, you don’t have to worry about searching the internet for toilet paper from grocerystores.com. There will only be one grocerystore.com recognized, and only one. There’ll be pizza.com, there’ll be cookies.com, there’ll be flowers.com, et cetera. Now second, the problem is maybe not so bad if that was the only thing that they could use, but there are going to be lawsuits when it’s ipizza.com because that’s Italian pizza, or Fflowers.com because that’s fresh flowers, or Ebookings.com. So we’re creating an area of exclusivity that goes well beyond the name.

Justice Brier: (54:10)
The third thing they bring out is that in fact the identification that you talk about flows simply from the fact that loads of people now know that each internet company has one name. So the interesting thing about your survey is not the 73% of the people who think that bookings.com is a single company, but the 33% of the people who think that washingmachines.com is a trademark special company, which it isn’t. And they do that because they know about the internet. So you’re taking internet power, not just advertising or commercial product .power and multiplying it. And the fourth thing is what justice Ginsburg said, there’s another way to achieve your result, unfair competition law. All right, now that’s a lot, but I want to hear your answer to those points.

Ms. Blatt: (55:05)
Sure. It’s not really a lot. It’s first, there’s the statute, that the statute decided the policy decision in our favor. If we meet the definition of a trademark, we get registered. Second, as a policy matter, the TouchNet brief is just wrong. If you look at pages 94 of the trial court record, read that was the government’s expert’s story, their narrative, the judge rejected it. And if you look at pages 164 and 167 of the joint appendix, our expert trashes that methodology and makes fun of it, and says if you, okay, take out, go ahead. Remove every single person who erroneously thought washingmachines.com was a trademark, and you still get a 64%, which is huge brand recognition for booking.com. Third, the government’s appendix just destroys this argument. They reject these marks day in and day out.

Ms. Blatt: (55:57)
They don’t get registered. Fourth, reality destroys their argument. Where are the lawsuits? Where are the complaints? Nowhere. I don’t see any. Our brief at pages 27 and 28 sites rent.com, tickets.com and travel.com and then sites… We just ran out of room to put them all, 123rent.com, rentsUSAnow.com, forrent.com. It’s endless. The notion that anyone is being crowded out is just silly. It would be one thing if they could explain someone complaining, but the ubiquity of the travel marks and the ticket marks and the rent marks is nuts and so-

Chief Justice John Roberts: (56:36)
Thank you, counsel. Justice Alito.

Justice Alito: (56:40)
What would your class position be if companies that took booking.com but made very slight variations bought trademark protection?

Ms. Blatt: (56:54)
Yeah, that’s fine and that’s why ebooking, We don’t object to ebooking. E-booking is not a problem, and I think it’s for the two reasons, if I could finish, it is exactly what justice Gorch had said. It is the fair use defense allows, under section 1115 B4, that anyone can use the registered name, here it would be booking or booking.com, to describe their services, no liability. And also, and McCarthy has a huge thing on this, that the more descriptive the names, these lawsuits just don’t work. And that’s true with the… It’s not just .com marks. Alzheimer’s has a foundation.

Justice Alito: (57:34)
Your client would not object to the registration of any trademark that simply made a slight variation in booking.com? That would be fine? All of those companies could register their trademarks?

Ms. Blatt: (57:46)
They are because there’s a million booking registrations already.

Justice Alito: (57:52)
[crosstalk 00:57:52] object to that?

Ms. Blatt: (57:52)
They don’t and have not and would not. Now, if there was fraud and somebody ripping off the good will based on booking.com, I’m sure they’d want to sue. But it would be very hard to bring that lawsuit, very hard.

Justice Alito: (58:08)
My concern with your position is exactly what I think Justice Breyer just suggested. You are seeking a degree of monopoly power that nobody could have had prior to the internet age. I take it a company could not have registered booking company. But because of the internet, you have booking.com, which gives you an advantage over other companies that are in that business. And now, you want to get even more advantage by getting trademark protection for that.

Ms. Blatt: (58:49)
So if I could turn to the company situation, that’s just not true. The wig company, which is registered, is celebrating its 50th year anniversary. It’s called the wig company. There’s also the wig shop and the wig store and the wig mart. And so it’s not like wig company has crowded out wig companies. There are many places that sell wigs just fine. It’s not like any genericword.com has crowded out. Weather.com exists with accuweather.com. Law.com, there are so many law.com variations that are registered and not suing each other and no one’s complaining that you just type in law.com into the database and you’ll see it.

Ms. Blatt: (59:33)
There’s just a lot of registered names. And that’s fine in terms of saying, well that’s just what the PTO does, but the fact that they don’t have any anti-competitive harm seems to be telling that you wouldn’t want to write an opinion destroying the billions of dollars of good will that’s been built up in not just .com marks but in company marks. And if you extend Goodyear past corporate designation, the government’s fighted. It said company means an association or a partnership. Well .com is not an association of a partnership. It’s a store to buy stuff.

Chief Justice John Roberts: (01:00:11)
Thank you counsel. Justice Sotomayor.

Justice Sotomayor: (01:00:15)
Ms. Blatt, I am troubled as Justice Breyer and Justice Alito are about the monopoly situation, but I’m also troubled by what’s the rule that you want the PTO to follow. They can’t trademark under law generic names. Are they required now to run their own consumer perception surveys before they determine that a particular name is generic? How are you okay with the existing rule that I think Justice Kagan read before, which is that there is no per se rule, but that… How is it going to change PTO practice? And won’t it lead inevitably to the registration of every single common name of every business and then an extensive legal fight on whether it’s become generic or not?

Ms. Blatt: (01:01:28)
So I 100% agree with Justice Kagan. Our view is the status quo, which is the primary significance test. It’s what’s the PTO’s manual says. It’s what the PTO has been applying, which is why our appendix and the government’s appendix are actually consistent. It shows the PTO day in and day out rolling up its sleeves, applying the primary significance test. No, you do not have to have a survey. The PTO looks at tons of evidence and says, look, consumers would see this as referring to any place on the internet that sells these goods. You’re not getting registered. And that’s the end of the story, and that’s why a lot of those marks end up on the rejected list. Now on our list, when they let in weather.com, they looked at different evidence and said, wow, weather.com has a big consumer fan base and has the primary significance of being a brand.

Ms. Blatt: (01:02:24)
So we got to register that. And that’s good for consumers. You want consumers to know when they go to weather.com, they’re getting weather.com and not accuweather.com. And same way with the dating.com and wrestlingfigures.com. So I hear you on you’re worried, but the PTO is up to the task. This is what they’ve been doing. And we’ve had their .com marks that have been registered from the late 1990s and 2000s.

Justice Sotomayor: (01:02:49)
If this is a factual question and a district court is not to give the PTO deference, then what we’re going to have is every district court reweighing all of-

Justice Sotomayor: (01:03:03)
… have is every district court reweighing all of this evidence that the PTO looked at. And frankly I’m on the margin with respect to your mark. Because I would have looked at E-booking, and car booking, and hotel booking, and all of those other bookings and said, “This really booking, standing alone, is generic, even with dot-com.” Now, you point to the Teflon study, but you seem to be saying that a district court who ruled a different way would be wrong as a matter of law. Could that be? Could any survey ever be dispositive?

Ms. Blatt: (01:03:39)
No. So let me be clear. A district court, and it sounds like we would have lost, had you been the trial court, could rule against [crosstalk 01:03:46] based on the surveys.

Justice Sotomayor: (01:03:47)
Maybe, maybe not. I didn’t look at that entire record.

Ms. Blatt: (01:03:49)
No, but you could. We could have lost at the trial court level. That’s the risk you take. A lot of people go the federal circuit route because they like federal circuit law, and you take a risk. You go usually the district court route when you think you have good evidence.

Chief Justice John Roberts: (01:04:02)
Thank you Counsel, Justice Kagan.

Justice Kagan: (01:04:06)
Good morning, Ms. Blatt. I guess what strikes me is something along the same lines is what has struck Justices, Briar, and Alito, and Sotomayor. It’s that there seems a disconnect between the primary significance test, and these kinds of names. Because the primary significance test is really asking, well, does a consumer understand something as referring to a category of products? Or instead, as referring to a particular product or service?

Justice Kagan: (01:04:34)
These names by definition are unique, and everybody knows that they’re unique. If you apply the primary significance tests to these completely unique URLs, aren’t you going to get a bias in the results? That’s true of the survey, the Teflon surveys. But it’s true of evidence generally. That it would see him as that you’re going to get a bias in the results and more things will seem to be registrable, then really ought to date.

Ms. Blatt: (01:05:02)
Yeah. Great question, and I think I can clarify this for you. Just like the wig company, or Wig.com, they can be generic for wig companies and wig producers. It’s not just, you have to say The Wig Company, no one thinks The Wig Company is referring to wigs. It would be generic for a type of company. It’s not just a category of goods, it’s the category of the sellers. If you think of Booking.com is no different than, The Container Store. You could say that is so unfair, that The Container Store, because there can only be one The Container Store. It’s the same way with dot-com.

Ms. Blatt: (01:05:47)
Now you’re right about the internet address, but that would indict every dot-com mark. Even your Paris hotel booking, because you would always win under this fear of it could never be generic. Courts have just been dealing with this, I’d say now for two decades, or at least the PTO. That we’re treating, the dot-com mark’s like house marks, store marks, association marks.

Justice Kagan: (01:06:13)
Okay. Let me ask you another question that goes back to what Justice Alito said. And you said to him and to the Chief Justice, “Well you wouldn’t sue E-Bookings.com or Hotel Bookings.com or any of a number of variants on the name. Who would you sue? When is a dot- com going to win a trademark suit?

Ms. Blatt: (01:06:32)
I haven’t seen any. But let me just be clear, the same reason the Alzheimer’s associations, and the paper stores, and the paper marts aren’t all suing each other because they lose. So these suits don’t happen. But why people want trademark registration is twofold. That’s outright counterfeiting. Because Booking.com is a popular name and we don’t want people ripping off, or a store opening up. I think if you read the Car.com brief, they show car dealers putting up signs calling themselves Car.com. That’s called ripping off. That’s called theft. And that’s what the trademark laws are about. So you need that.

Ms. Blatt: (01:07:08)
But secondly, I think that they want it for the 1125D. It’s a specific problem with a spoofing and cyber scams. That is definitely what the internet Amicus briefs are saying is that they need this. And that’s what booking cares about. Booking does not like internet scams, and cyber scams, stealing its business. And ruining its reputation because you know someone infects your internet and destroys your identity.

Chief Justice John Roberts: (01:07:37)
Thank you Counsel. Justice Gorsuch.

Justice Gorsuch: (01:07:40)
Good morning. If I understand your point correctly, Ms Blatt, it’s that the government’s concerns about competitive advantage are minimized, or mitigated, by the fact that mark’s like Booking.com are relatively weak. Because, you’re putting together two generic terms. Consumers may well have your company in mind when they see that. And you’ve got evidence and we can argue about how good that is. But there may be no consumer confusion. That may also be true with E booking or hotel booking. Consumers may or may not, depending on the facts, have particular companies in mind. The relative weakness of the mark is your answer, together with the fair use doctrine, to the government’s monopoly concerns. Is that a fair summary?

Ms. Blatt: (01:08:36)
Much better than I said.

Justice Gorsuch: (01:08:39)
Will you expound on that please.

Ms. Blatt: (01:08:40)
Sure. And let me just help you with the reason why they’re so weak to begin with, and why McCarthy has this whole chapter of every lawsuit. Where similarly worded marks can’t Sue for others. Let’s take Weather.com and AccuWeather.com. So it turns out that consumers, when you have very descriptive marks, like both of those that are registered, consumers become very conditioned to focus on the difference. They know Accu is different. If you look at booking and E booking, consumers would focus on, Oh, there’s the E site. There’s the E one. I want to go to the E one.

Ms. Blatt: (01:09:14)
And so it is very, very hard to show likelihood of confusion because the more similar the mark is, it becomes extremely impossible, or exceedingly unlikely to be able to prove that. And that is not specific to the dot-com context. It’s the same problem that every Mart shop, source, place, exchange, emporium, collective. There’s a million dog marks, a million coffee marks, a million paper marks. They all have different store shop place. Very similarly worded, they never sue each other. If they do they lose.

Ms. Blatt: (01:09:52)
I’m not making it up Justice Gorsuch. They had a whole brief to site examples of lawsuits.

Justice Gorsuch: (01:09:57)
Yep. Can you address for me a little bit more on the record? I know we’re not the trial judge here, but Justice Prior’s point. I think 74% of consumers recognized Booking.com as your client. But 33% think that anything dot-com is a real store. So only about, as I understand it, about 41% on a net basis recognize your mark. What do we do about that? what should we say in this opinion, if anything? On what standard? If not the facts.

Ms. Blatt: (01:10:33)
Okay, so you’ve read the [inaudible 01:10:35] brief and the government’s brief. You have not obviously read our expert that explains how humorous-

Justice Gorsuch: (01:10:39)
That’s not fair. Now come on.

Ms. Blatt: (01:10:41)
Okay. Why this is so funny is that you would never net them out. You don’t take 74 and subtract 33, it’s just based on a very lack of understanding of survey methodologies. You net out the participants. And so when you net out the participants you say, “Lisa Blatt dumbly thought Washing Machine.com was a brand. So we’re going to take her out of the survey.” So when you look at the people who correctly saw Washing Machine.com as generic, 64% still saw Booking.com. And so I guess I can say is there’s an extensive discussion at this [crosstalk 00:08:21]-

Justice Gorsuch: (01:11:22)
I understand that. I’m trying to obstruct just to level up from the facts.

Ms. Blatt: (01:11:26)
Okay. A level up-

Justice Gorsuch: (01:11:28)
And ask for your guidance as to what the court should say with respect to these kinds of survey methodologies? If anything.

Ms. Blatt: (01:11:34)
I think-

Chief Justice John Roberts: (01:11:36)
Briefly Ms. Blatt. Ms. Blatt?

Ms. Blatt: (01:11:42)
Oh yeah, I’m sorry. So what I would say is that the survey instructs the participants ahead of time, that office supplies is a common, office supply.com is generic. And if they didn’t understand that, they couldn’t take the survey. That Staples. com was a brand and Office Supplies.com is generic. If the-

Chief Justice John Roberts: (01:12:05)
Justice Kavanaugh.

Ms. Blatt: (01:12:06)
Sure.

Justice Kavanaugh: (01:12:08)
Thank you. Mr Chief Justice. Good morning Ms. Blatt. I want to make sure I understand what you think about our precedent in Goodyear, exactly. Could the principal of Goodyear still have some value outside the dot-com context? In the classic company context in which that case arose because the dot-coms are inherently unique. Or is your position more broadly that Goodyear just has no value anymore?

Ms. Blatt: (01:12:37)
Our fall back is certainly you shouldn’t extend it to dot-com, because dot-com is closer to the word store and shop. But if you took Goodyear at its word, you’re killing nonprofits because of the association problem. Goodyear, the terms of the opinion say it means association, and that’s how nonprofits identify themselves, or coalition or society. So you have the Amputee Coalition, the Christian Coalition, there are so many of these associational marks that I think Goodyear would destroy. In addition to a Foods Co or Container Store.

Ms. Blatt: (01:13:12)
I just want to say one thing about the government’s making fun of the Cheesecake Factory. Crab House is not a literal house where crabs live, they’re actually dead and you eat them. And the government thought Crab House was generic. If you go down this road of thinking that certain words are off limits, I just think you’re creating a real mess that’s very unstable, un-principled, and unworkable, and unclear.

Justice Kavanaugh: (01:13:36)
Okay. Picking up on Justice Kagan’s line of questioning. It seems that your role invariably will lead to a situation where most every dot-come business that sells good or goods or services will be able to obtain a trademark. Maybe in other words, your position leads to the opposite kind of bright line rule. Maybe that’s okay, but is that wrong? And if so, when wouldn’t it?

Ms. Blatt: (01:14:03)
I think it’s wrong, but I hear at least six of you concerned about it so I can try to help on this. What you can do is make clear in your opinion that a district court, if there is evidence from all kinds of sources that the PTO uses. And all those examples I gave in the beginning, they cite all kinds of examples proving that generic word dot-com marks flunk the primary significant test. That the PTO can look past survey evidence and so can courts. If you’re really worried about a survey bias.

Ms. Blatt: (01:14:35)
Now, we have a whole brief of survey experts saying this was a great survey, so I hate to trash our survey. A lot of people thought our survey was great. It’s the classic Teflon survey, but also let me just take you to Waffle House. Waffle House, there was a fight about the survey. The PTO said it was generic and Waffle House came in with a survey and they trademarked it. I don’t know why cot-com is having some sort of, it’s scary and therefore it should be treated differently. Because of this fear that all dot-com mark’s have an unfair advantage because of a website. The PTO has been doing this for two decades now without a problem.

Chief Justice John Roberts: (01:15:17)
Thank you counsel. Ms. Ross, you have three minutes for rebuttal. Ms. Ross? Three minutes for rebuttal.

Ms. Ross: (01:15:37)
Thank you Mr. Chief Justice. Sorry about that. If I could just focus on three main points. First, I think respondents who operate from the presumption that the Lanham Act knocked out all prior common law unless it was expressly preserved. That’s the opposite of the way that we usually think about statutory change. I think just a couple of weeks ago [inaudible 01:15:56] to support nine justices look to the common law to determine what the Lanham Act preserved and I think the same should be true here. That’s particularly so because in the examples that respondent sites like the geographic terms and descriptive terms, Congress was clear when it wanted to overturn pre Lanham Act of precedent.

Ms. Ross: (01:16:12)
I think on the second point, respondents suggest that the primary significance test did it in particular. I think I heard my friend who suggest for the first time today that Kellogg itself did it. That’s inconsistent with the position that they take on page 22 of their brief. Which acknowledges that Kellogg actually discussed the primary significance test to determine when a descriptives term would get protection under unfair competition laws. So that’s entirely consistent with the view here that generic terms are never susceptible to trademark even when showing a secondary meaning has been made.

Ms. Ross: (01:16:48)
Again, we think that the primary significance test coexists with prior law, which includes Goodyear. And I think I’m responding points to this idea that the PTO has been applying the primary significance test. That’s true with the Goodyear sort of guardrail. It understands that a generic term can’t be made into a trademark, simply by showing that a bunch of consumers think that it is associated with a particular mark, or particular brand. Now, respondents examples, actually our respondent survey actually proved this point.

Ms. Ross: (01:17:16)
There was a lot of back and forth about Washing Machine.com versus Booking.com. But I think what’s really instructive here is Washing Machine.com versus Supermarket; 33% of respondents in respondents survey thought that Washing Machine. com was a brand name. Zero, not a single survey respondent thought the supermarket had that characteristic. So clearly the dot-com context is doing a ton of work on respondent’s views.

Ms. Ross: (01:17:42)
The third point that respondent really hit was this idea that there wouldn’t be any competitive harm from respondent’s rule. I think that’s clearly not correct. We know that because of the same reason that we know that booking companies shouldn’t be allowed to be trademarked. We just know that trademark law is not supposed to take terms off the table that everyone needs to describe their goods. I think you know respondent focused on certain examples like Tickets.com and Container Store.

Ms. Ross: (01:18:10)
I think again, responding is misunderstanding that you have to always look at what those are registered for. SO Tickets.com for example, for ticket management services, not for tickets generally. So they’re massively overstating what’s going on here. I think, again, there might be hard questions at the margins on some of these. Whether it’s something like container or tickets as being used in its generic sense. But that’s not reflective of the dot-com or the company, that’s at that first root level.

Ms. Ross: (01:18:35)
Finally, I think if they’re not going to see E-booking.com and Hotel Booking.com, it’s really unclear what they want out of this. Ripping off respondent referred to is covered by unfair competition. Typo squatting likewise, is covered by unfair competition. And section 1125D which respondent pointed to, presumes that you have a preexisting trademarks like Kodak, or like Xerox, or like a Teflon in the old days. And someone goes along and gets that trademarked-

Chief Justice John Roberts: (01:19:03)
Thank you counsel. The cases submitted.

Speaker 4: (01:19:10)
The Honorable Court is now adjourned until tomorrow at 10 o’clock.