tv Supreme Court Oral Argument in Patent Trademark Office v. Booking.com CSPAN May 5, 2020 12:45am-2:05am EDT
due to the pandemic, the supreme court for the first time in history heard oral argument via teleconference. the case involved a travel reservation company and its flights to trademark its website, booking.com. the online company filed in 2011 and in 2012 trademark applications with the u.s. patent and trademark office but they were denied the agency citing that booking.com is too generic for legal protection. the company filed suit in federal court and they won. the patent and trademark office filed an appeal to the court.
>> the chief justice and associate justices of the supreme court of the united states. all persons having business before the honorable supreme court of the united states or admonished to get their attention. we will hear the argument this morning takes 1946 the united states patent and trademark office versus booking.com. >> mr. chief justice, and may i please the court, it is a principle of the trademark law no party can continue for a generic term like wine or green. the act confirmed the generic term is never entitled to
trademark protection matter how much money and effort the user has poured into promoting the merchandise and what success it has achieved in the public identification. in other words, the meetings require distinctiveness and irrelevant to the generic terms. it is undisputed that it's generic for the reservation service responding. respondents could entirely register and the quick filed the addition of the designation like company or ca doesn't have a taxable mark. that's because it indicates the parties that formed an association or partnership. prohibiting from obtaining a trademark ensures no party can monopolize a generic term. the same should apply to booking.com. it is an online equivalent of
the company. there is no reason to be able to federally register booking.com as a trademark when it couldn't register booking inc.. registration would effectively give a monopoly on the word booking.com and interfere with competitors ability to similar domain names. that is problematic because of how the internet works. we can obtain the rights for the domain name so the respondents already enjoys respondentalreadt competitive advantage is the equivalent that booking inc. with black. for the federal trademark registration nearly every business can do the same. because the domain names are one-of-a-kind, a significant portion of the public will always stand a generic term to refer to a specific business even if it isn't familiar with a
particular business at issue. >> council, you mentioned the goodyear case, but you didn't quote the language from the statute that is at issue here. that language says the primary significance of the market to the public shall be the test for determining whether the mark has become generic. the goodyear case had a test of absolute rule and it seems to me that in trying to understand what the congres congress had it takes more sense to follow the language chosen in the statute rather than a 130-year-old case of hours. >> mr. chief justice, two points on that. first the act preserves a distinction between generic and descriptive terms.
generic terms confirmed the definitional provision and then again in section 1052 confirms the generic terms are never successful even when they acquired secondary meaning is and descriptive terms may acquire secondary meaning. so i think it preserves the sort of underlying principle and specifically the cancellation provision is on 11 of the appendix and this is the primary significance is to the public matter of the motivation for determining whether the registered mark has become the generic name of the services. i think it's a second that provision was enacted in 1984 and those caves or sort before itthe briefing suggested
overturned. >> it was enacted in 1984 but that is a lot closer today than in the goodyear case that was 135 years ago. i don't know why we would focus more on the statutory language than that old case. but more to the point may be that if this is a generic term, booking.com, then that means that describes a category of goods or services. but when you talk about other companies in that category, whether it's travelocity, priceline, nobody refers to those as booking.com. it's not a generic term to describe that type of service. >> we agree that in an ordinary case one excuse that are generic
to recur or to understand it. it's how the public would understand a specific term. so for example, in goodyear they held that it couldn't be trademarked and that is true even though nobody refers to it as incorporated. >> thank you, counsel. justice thomas. >> a couple of questions. could booking a player and 800 number that is similar to 1800 plumbing which is a registered
mark? >> under the federal circuit decision, yes it could. the decisions are debatable under the principles that we think that it does follow those decisions because of the right of the direct appeal to the federal circuit and it's significant that those are distinguishable in that sense it allows them to respond because of the fact longer domain names can include booking.com. that isn't true of something like 1800 booking. >> that could be true, but i would like you to compare this to goodyear. you had a generic term but also
added the term any company could use. here it could only be one domain address. it could be more analogous to the numbers that are also individualized. >> they can hold the domain names. i think the reason the respondent doesn't do that is that it's good for hotel booking.com and the confusion analysis on the back end but also have to account for the fact that each of those is unique with a trademark protection.
what they want is the ability both to exclude others from using the same name and exclude others from using names that are similar because of the functional nature of the internet they already have the first advantage so others can't use booking.com online and there are competitors will want to use those terms in the promotional materials because that would direct the compares to their website rather than their own. this is why they garner so much money on the internet. the plaintiff the case that really matters is the ability to block out competitors, and i think that is the type of anti-competitive concern the court expresses is if you allow one company, it is going to preclude others from marketing themselves as what they are.
i think the judge explains this very well it's something you couldn't get into brick and mortar world to decide whether or not to adopt a generic theme and that allows them to get the racket -- in. it doesn't make the generic or non- generic term. so many already registered marks would be subject to cancellations. i take it that there are dozens of dot com's that have been registered. is that so?
>> there are far more and they can make a few points on this. they've been consistent with and so by and large i don't think that there's going to be a huge change. those examples to show a few flaws that they seem to think on the boob combination of any mountains are always going to be generic. that isn't true. you have to look at how they are being used so for example the respondent looks at the cheesecake factory but i that isn't a literal factory producing cheesecake at the restaurant. >> i wanted you to focus on cancellations. who could apply to cancel an
existing -- would the pto themselves and their purpose? >> i don't think so, your honor. competitors could file petitions to cancel registrations and the fact that most generic would allow the registration for excuse making installation at any point. those could have brought the cases previously based on the federal circuit and a i think because it overstates the number that have been incorrectly registered we don't have the fear there will be a huge backlash.
>> i have another question i wanted to ask you. your answer to the telephone number question, 1800 booking, that is a federal circuit question to deal with that if the federal circuit is wrong. you have another distinction that would distinguish it from the domain name. in that way that booking couldn't be a longer for member so there's a defect of reason the same competitive risks are
not there. >> justice thomas's question, justice ginsburg what do you want to say about that? you can have a trademark that is an address. you can have a trademark that is a telephone number so why can't you have one that is a dot com? we think they are equivalent. there's a website on the internet that tells you it is a type of service that is a classic generic usage and we think that follows from
and then the registrant there has to with the recognition in the same way. and that amazon has to do and for that benefit from using a generic term for with those online booking services but to go with that such as other competitors cannot use the name and consumers will go for the online booking even if there is a knowledge on the part of the consumer. >> thank you. justice alito? >> what you think i should do if goodyear is the case from a different era and doesn't
control here but also and enacted in a different era namely in the pre- internet era and the case law that belongs to that era? how can a rule that makes sense in the internet age be reconciled? >> it is pretty reconcilable and going back to the chief justice first question. that is not necessarily in the statute of what was already considered distinctive like teflon and kodak. so there is a very narrow rule
for congress passed the specific ninth circuit case. it is true and other places but the pre-existing common-law but that was for the same way that common-law does but even in taken that outside of goodyear you have the very basic trademark policy that has always been true. and the court recognize that it with the categories of terms and that's true even in the brick-and-mortar world. and with the balance between competition and brand recognition on the one hand and if there is a
monopolization site because responding to monopolize any term i think it is worth noting that they actually require them to have the word orange or that it would be generic so if and only if they can think of that of those of the same color so that describes the outcome under trademark law. >> and with that primary significant test. in responding to that argument. and for those circumstance with that evidence.
and that was holy reconcilable. and that to be irrelevant. and that is so consistent. >> justice sotomayor your? >> justice? >> i'm sorry chief. picking up on where you are right now, is it your position in the primary significance is never to be used to determine what is generic and what is not? if we don't use that in whole
or in part what other things with the pto examiner go to? >> justice it is not our position for the primary significance again the reason the courts don't do that over with common-law. but what they should do in this instance and then to figure out and then to indicate that those are helpful in this regard to be used by other competitors but what they should or shouldn't do to have the survey evidence
is that it causes some issues with that functional nature of the internet that then they will misrepresent the number of people who understand that booking.com is a business only because of the way the internet works. >> i look at your definitions of booking in one definition of booking a hotel but this service is much broader than that you can book a hotel, and these are leisure travel and cars maybe with that booking is generic but by looking at
all the evidence that you point to hotel booking that a finder of fact could well conclude that booking.com is related to one entity and not to what is more of a descriptive they on a generic phrase. >> justice sotomayor your i disagree on the merits that that is acknowledged that is generic with those services and not those hotel online services. to the broader point it speaks to the respondents examples which is to say to only have a particular category and the
usage. >> justice kagan. >> good morning. and the way to and for a categorical rule? semi not? and the way they would be registered is that correct? >> i don't know you me with trademarks of this kind. >> so booking.com and other places that combination does not add any. like the courts of appeals and with that interplay between the two words. that those could necessarily
provide protection. and if that categorical position. and that the.com typically does not have that significance but it does not say never. and the pto examiner say. >> i don't think there is a difference. and with that category that the federal circuit in the ninth circuit have recognized. whatever respondent would do would say that this is the rare case and then go to have this evidence. >> in your brief you are not
making the argument the people go around but instead say booking.com is generic and this is on page 44 of the brief because customers would understand to convey only that they provide online booking services with no additional meaning force those of other providers. so maybe or maybe not. so what is the consumer going to understand and with that additional meaning? so maybe it would. along with categorical rule? >> and then to convey to consumers that additional meaning and then to point to a
particular website. that is a functional feature of the internet for trademark protection that can't be enough to get them over the line. so with that distinction between generic and descriptive terms of a feature or a characteristic apple pie. >>. >> i'm sorry to interrupt and on a categorical rule is or something else you would like the courts to include of had to evaluate registration claims? and the categorical is a bridge too far in terms of saying what it is?
>> a few points that we think the court should follow goodyear and without further specification to have trademark protection that is what we are asking for. >> the bare minimum with that confusion analysis on the backend what is driving is the domain name. >> thank you counsel justice gorsuch. >> i would like to follow up on that i would like to take a minute to continue answering that question. suppose the court does not accept your rule, how do you advise the court to write and opinion that draws on points that are necessary?
>> even if the court did not control her is very indicative of the analysis. >> so put that aside for a moment. i know you want us to go there but put that aside. but to be recognized that those terms generally are not susceptible to trademark registrations so what sound like all generic.com other than the secondary idea and that it is an online booking agency and then to understand something else.
and then to have consequences the oranges are incorporated everything is subject to survey evidence. >> that leads to my next question so why aren't those sufficient? because we do always in every case to take very seriously about consumer confusion. it seems a lot of the argument law policy issues but it accounts for that and then also with the use of the generic term but the fair use doctrine is designed to account for that so why aren't there sufficient tools for that you have raised why isn't
this just another example of a monopolization concerns intersect and we have to see the judgment congress made in this particular area. >> there is a lot of that question but the tools are in the direction i think that's the generic term is it enough to resolve? so you mentioned that analysis but we should trademark on booking.com but it's he booking.com comes along because we were here first what is good for the goose is good for the gander. but it seems that e-booking.com should have equal protection.
>> i don't think that has. >> justice kavanaugh? >> thank you chief justice. the respondent says there is no threat of monopoly with domain names because they are unique in that they wouldn't be concerned on e-.com so what is the real world practical problems you can see if they could obtain trademarks? >> the real world practical problem is that they wouldn't think it was infringing. but if it turns out they are confused so that is a very
real risk but what they are always getting from the fact that it on the internet so it is asking what is happening in the real world and to exacerbate in a generic name and also back on the trademark. and that it already gives respondents to take advantages. may be a lesser level but presumably every other trademark excuse me domain name hazard trademark. and then to become a domain name i'm not sure rather why with those principles to have
trademark protection and then to go that direction for that generic.com names. >> it also points out there have been registrations of booking.com and other countries and the united kingdom can you respond to that? >> justice kavanaugh that may be true i don't think it is relevant and constrained by goodyear but that code on - - that understanding in that generic term that the public has that all respondents.
>> why did you take a minute to wrap up? >> thank you mr. chief justice and goodyear.com and says that the respondent only is where bookings can be made with that between generic and descriptive terms and then to overturn goodyear including the monopolization and then we respectfully ask the court reversed. >> thank you council. >> thank you mr. chief justice may it please the court this is how to tell the difference between descriptive names and generic ones the three reasons the court should hold and then
a potential brand. first second the aggregated goodyear and third the statutory privilege to let consumers to decide trademark protection. it has always required section 1052, 1091 and 1127 it is a distinguish among brands and then to protect prescriptive names that consumers find useful but that is codified by unfair competition that is descriptive but not generic names and to pass that to adopt the primary significance under the unfair competition law between generic and descriptive names for the past seven years courts have
embraced this test to tell the difference and it was against the universal backdrop that congress codified that significant test of section 1064 to overrule the decision in that context. and with the ratification of the primary significant test to define a generic name the government has no other test other than primary significance. second goodyear did not survive the act route to branch and island of words are generic as a matter of law regardless of continuous use 1091 and 1127 defined generic names as ones that do not help consumers distinguish a brand so everything else must be registered a factual question
about what consumers think is the antithesis. >> thank you counsel. relying heavily on the primarily significance test but that's only in the provision of the statute dealing with cancellation of marks of course this is not a cancellation case it is a registration case so why should we assume the primary significance test carries the weight you would give it? >> sure. like i just said, the 1064 as our ratification of the law as you look at the dividing line between the generic term and descriptive term that specific amendment was to overrule a decision to come up in the constellation context and terms of the primary significance there is another
test to what consumers think of the mark because those three provisions require registration of how consumers distinguish among brands. >> the reason congress put this in the cancellation section is because they appreciated the significance of goodyear which is back to registration of mark marks. >> that can't be right because goodyear is a common-law rule. that is based on the principle under common law that no mark could be trademarked and competitors with equal truth could hypothetically so that mark so by its terms interchangeably uses the generic and descriptive marks and that is true because, and i did not care both were off
limits so goodyear specifically said one company is no different like the coal and those that are elite that are descriptive terms that this court has five cases at the time right after goodyear describing not only descriptive terms but two cases that are cited on page 28 of the governments brief and that is where the government basically said you do not deserve a trademark because everyone with equal truth could be a booking company. >> there are a lot of companies that use booking in the second level domain e-booking.com, euro bookings, travel booking.com , if you succeed to trademark booking.com then these competitors are impeded from
using that term which is an accurate description of the services and goods they provide. >> is that something to take into consideration? >> sure. and with the variation of all marks that are descriptive that there are three reasons why you should not worry about the government concerns about monopolization. the concerns are just in a brie brief. is not an example of harm despite those marks in booking.com is registered in 85 other countries. >> the second and third? >> the third is the legal reason in terms of why it doesn't crowd out. the more descriptive the market is the harder it is to
show a likelihood of confusion or requisite of claim. >> justice thomas. >> thank you chief. just getting back to the chiefs question, you seem to rely almost exclusively on the primary significance test do you need that test to prevail? >> no. regardless of what you think of our test the government cannot be right because those overruled and completely eradicate any notion that would ignore what consumers think and with that primary significance test you don't have the common-law of trademark and colors is just a factual question to define the mark as useful.
it went under three provisions the justice thomas there is a whole separate problem the government has that require the courts to help consumers view the market as a whole. you can't just think why are this company generic and that is the same with the word container and store. and you put the two together and to weigh the look that consumers would do that as a whole. so to know that primary significance to know the government is wrong in every court has said that primary significant test governance. it is a test applied in this case and something i think is devastating for the government
is the appendix of the ed marks is on the primary significant test to look at the records bookkeeping.com , newspaper archive.com. there is no goodyear looking at expensive evidentiary record. our appendix is not the same. weather.com tickets.com dating.com. and another bed-and-breakfast mark it is evidence some are looking that consumers really see if.com is distinctive but the status quo is the primary significance test would also should give the chief some comfort that most part marks funk the primary significance
test. >> so the government relies on goodyear and you say there has been a sea change in trademark law in particular so can you explain briefly how they have expanded the trademark law and what is protected and not protected? >> sure. a basic overall in the sense with a five supreme court cases and and these are famous trademark cases all about the bar on descriptive marks. you could not and maine are at trademark the watcher whatever the typewriter was you can't do it because everybody has an
equal right to say they have that characteristic. >> thank you. justice ginsburg. >> if you have the same name than that consumers will know the.com is a particular source. also as a commodity but one of fried. one that you don't argue that generic.com is always potentially trademark about so when does generic.com remain generic? >> to pass the significance test the sites that i gave you from the government appendix are examples of how generic word.com works so in our survey with other examples the
overwhelming majority found washing machines.com were generic and overwhelming found booking.com referred to the travel website used around the globe when it could be a commonsense example that sometimes people think of the generic were generically i have searched every grocery store.com looking for a toilet paper now i'm looking at hardware.com and food delivery.com for all take out. those are generic usages of the generic word.com and the example of the database shows you and just for the record of survey evidence for any and all relevant evidence of those usages evidence from newspapers, consumer surveys trade journals regions to
respect the survey as unreliable and the generic.com mark loses because the evidence is otherwise overwhelming the mark flunks the significance test but here the government has dropped trying to argue the survey was unreliable but that was not proven in court of appeals the district court said not just the survey but all the evidence and the lack of evidence but other cases will turn out differently. >> passing off the other services is what you're concerned about why does unfair competition law afford adequate protection? >> because we are a business
we want the same competitive rights to federal registration but specifically the.com marks lead those sections in particular because it allows proceedings with you have a cyberstem they arrive overseas and the person is beyond the jurisdiction of the us courts. if you are trademark it allows you to see the domain and shut it down. spoofing and squatting and cyberscams are prevalent on the internet. but even if you didn't have that specifically they are not second-class citizens they deserve the same trademark registration rights as any other company to protect against infringement or counterfeit. >> justice breyer. >> good evening.
on the mccarthy trademark it's a combination of four things. one, the trademark law is supposed to give the company the advantage to have a commercial identification it is not supposed to create monopoly or market power beyond that. here, the power of the trademar trademark, your trademark is exactly exactly coming out of the fact that everybody knows it's one with one name if you can do that in the future you don't have to worry about searching the internet for toilet paper from grocery stores.com there will only be one that would be recognized pizza.com cookies.com flowers.com et
cetera. second, maybe not so bad if that is the only thing they could use but there will be lawsuits when it's i pizza.com because of italian pizza or f flowers fresh flowers or even bookings.com so we have an area of exclusivity going beyond the name. the third thing is that in fact the identification which you talk about grow simply from the fact that people know each internet company has one name so the interesting thing about your survey is not the 73 percent of the people who think that bookings.com is a single company but the 33 percent who think washing machines.com is trademarked and it isn't did they do that because they know about the
internet so you think internet power not just advertising or commercial product power and multiplying that and is justice ginsburg said there's another way to achieve your result unfair competition law. that's a lot but i want to hear your answer. >> it's not really a lot. first the statute decided the policy decision in our favor to be registered. so as a policy matter is just wrong. look at page 94 of the trial court record with the narrative they rejected it look at pages 164 and 167 of the joint appendix we trashed that methodology and makes fun of it every single person who erroneously thought washing
machines.com was a trademark and still with 64 percent brand recognition which is huge. third, the government appendix destroys this argument and reject these marks day in and day out and don't get registere registered. where are the lawsuits and complaints? where? i don't see any. twenty-seven and 28 tickets.com and travel.com. and we ran out of room to put them all. it is endless. the notion it is silly but they could explain someone complaining but the ubiquity of the travel marks and ticket and rent marks is not. >> thank you counsel. justice alito. >> what is your past position of companies that took
booking.com with a very slight variation about trademark protection? >> that's fine that is why e-booking does not object to e-booking that's not a problem for the two reasons if i could finish is exactly what was said the various defense allows under section 1115 anyone can use the registered name here it is booking.com to describe their services and also mccarthy has a huge thing on this but the more descriptive the names often that doesn't work even alzheimer's has a foundation. >> so you would not object to the registration of any trademark that simply made a slight variation of booking.com? that would be fine?
all those companies could register their trademarks? >> they are. >> answer the question. >> they don't and have not and would not now fried and somebody ripping off a good name i'm sure they want to sue but it would be hard to bring the lawsuit. >> very hard my concern with your position is what justice breyer suggested you are seeking a degree of monopoly power that nobody could have had prior to the internet age. a company could not have registered but as a company but because of the internet , you have booking.com which gives you the advantage over other companies that are in that business. and now you want to have even
more advantage with trademark protection. >> if i could turn to the company situation the company which is registered is called the wig company so it's not like they have crowded out wig companies there are many places that sell wigs just fine it's not like any generic word.com it exist with accuweather.com. law.com there are so many variations that are registered and nobody is complaining you just type in law.con into the database there's a lot of registered names. that's fine but the fact they don't have any anti- competitive harm that you
don't even want to write an opinion destroying those billions of dollars but in company marks? if you extend goodyear past corporate regulation it says company means and association associations.com is not the association of a partnership it is a store. >> justice sotomayor or. >> i am troubled as justice breyer and alito are about the monopoly situation but i'm also troubled by what is the rule you want the pto to follow? they cannot trademark under law generic names so now are they required to run their own consumer perception surveys
before they determine a particular name is generic? power you okay with the existing rule that justice kagan did before that there is no per se rule? so how will that change the pto practice and what will lead to the registration of every single common name of every business? and then the expensive legal fight if it is generic or not. >> i hundred percent agree it is the status quo which is the primary significant step it's what the pto has said which is why our appendix is consistent
it shows the pto day in and day out apply the primary significance test. no you don't have to have a survey there is evidence so look, consumers see this as referring to any place on the internet that sells the goods. that's the end of the story. that's why the marks and up on the list but when they lead and whether.com they look at different evidence and said that has a big consumer fan base with the primary significance of being a brand we have to register that. that's good to know that they are getting whether.com and not accuweather.com. i hear you that you are worried that pto is up to the task this is what they have
been doing their marks have been registered from the late 19 nineties and 2000. >> if this is a factual question and it's not to give the pto deference, then what we will have is every district court to re- way all the evidence and frankly i am on the margin with respect to your mark because i would've looked at e-booking and hotel booking and car booking and all of those others that bookings standing alone is generic even with.com. now you point to the teflon study but you say the district court who ruled a different way would be long wrong as a matter of law? >> no. let me be clear the district court.
>> maybe the trial court. >> but you could have lost at the trial court level that's a risk you take. they like to go the circuit route because they like that circuit law and the district court law if you thank you have good evidence. >> justice kagan. >> what strikes me along the same lines as justice breyer and alito that there is a disconnect between the primary significance test but does the consumer understand something referring to a category of product or to a particular product or service. and these names by definition are unique. and to apply the finite significance test to the
unique url will you get a bias in the results with that teflon survey but it seems that you will get a bias that would be registered. >> great question i think i can clarify this and with the company they can be generic and as producers so is not just you have to say we are company referring to wigs or the generic type of company is not just the category it is the category of the sellers it's no different than the container store there could only be one big container
store you are right about the internet address but that is every mark even paris hotel booking so it could never be generic so that the pto that are treating the.com marks like other marks. >> let me ask another question and you said to chief justice and justice alito e-booking's hot hotel.com or any number of variants, when will that win a trademark suit? >> i haven't seen any the same reason alzheimer's association and the paper stores are not suing each other because they lose. but they want trademark
registration is twofold because of outright counterfeiting booking.com is a popular name they do want people ripping off. car.com shows car dealers putting up signs calling themselves car.com that is what the trademark laws are about. second they want it for the 1125 a specific problem with spoofing and cyberscams. that is definitely what they are saying booking does not like internet scams or cyberscams. and with your identity. >> thank you counsel justice gorsuch. >> good morning if i understand your point correctly, it is that the
government's concerns about competitive advantage are minimized or mitigated by the fact that marks like booking.com are relatively weak because you put together to generic terms consumers may well have your company in mind when they see that but there may be no consumer confusion consumers may or may not have particular companies in mind but it's your answer with the fair use doctrine because of the monopoly concerns. is that a fair summary.
>> much better than i said. >> please expand. >> the reason they are so weak to begin with some we were reworded marks can sue for others but whether.com and accuweather.com. it turns out consumers with very descriptive marks like those that are registered and then they are conditioned to focus on the difference and look at e-booking there is the e1 so it's very hard to show that confusion because the more similar the market it becomes extraordinarily impossible or unlikely to prove that and that is not specific it is the same problem every source place collective because the dog marks or coffee marks or paper marks are all different stores
similarly worded they never sue each other. not making it up they had a hold brief deciding the lawsuit. >> address on the record i know we are not the trial judge but to justice breyer's.74 percent of consumers recognized booking.com as your client but 33 percent say 33 percent of anything.com is a 41 percent of net basis recognize your mark so what do we do about that and what should we say in this opinion if anything? >> so you read the brief obviously have not read the expert. >> that's not fair. come on. >> but you never met them out
it is just based on lack of understanding a survey methodology when you net out the participants that washing machine.com was of brands we take her out of the survey so if they correctly saw washing machine.com is generic 4 percent still saw booking.com and said there is still a discussion? >> understand that are trying to go from one level up from the facts as to what the court should say with respect to the survey methodology if anything. >> so what i would say is the
survey instructs the consumers ahead of time but office supplies.com is generic if we understand that they cannot take the survey but office supplies is generic staples.com is a brand. >> justice kavanaugh. >> thank you mr. chief justice i want to understand what you think about the president of goodyear exactly the could be principles goodyear could still have some value outside the.com context in the classic company context in which that case rose because the dot-coms are inherently unique where is your position more broadly that goodyear has no value anymore. >> certainly should not extend that to.com but if you take
that at its word because then you're killing the nonprofits because of the association problem and that's how do nonprofits identify themselves so they have a coalition of society the christian coalition there are so many of these that i think goodyear would destroy like the container store and just the government making fun of the cheesecake factory the crab house and the government thought crab house was generic. if you go down the road of thinking certain words are off-limits i thank you are creating a mess that it is unprincipled and unclear. >> picking up on justice kagan's line of questioning it seems that your rule is
leading to a situation where almost every.com business that sells goods or services could obtain a trademark maybe in other words your position leads to that rule maybe that's okay but is that wrong? if so when not? >> i think it's wrong but i only here six of you concerned about it so what you can do is make clear in your opinion the district court if there is evidence through all kinds of services with all the other samples i gave in the beginning that generic word.com marks the pto cannot pass survey evidence if they are really worried about the survey bias we had a hold brief of survey experts say this is a great survey. i hate to trash and a lot of people thought it was great
but waffle house there was a fight about the survey. waffle house trademarked it i don't know why.com like it is scary and should be treated differently because of the fear all.com marks have the unfair advantage because of the website the pto has been doing this for two decades now without a problem. >> you have three minutes for rebuttal. >>. >> thank you mr. chief justice. first i think to operate from the presumption actually to
knock out all product prior common law and the way we think about statutory change just couple weeks ago nine justices look to determine and the same should be true here because of those examples like those descriptive terms. on the second point with the primary significance test on my friends to suggest it is inconsistent on page 22 of the brief and then to discuss the primary significance test to get protection on government protection laws so that generic terms are never susceptible to trademark even
when a secondary meaning but the primary significance test is goodyear so that is true to understand a generic term cannot be made by showing a bunch of consumers are associated with a particular mark or brand so the survey proves the point with washington on - - washing machine.com but what is effective washing machine versus supermarket but washing machine.com they thought that was a brand name not a single survey responded thought supermarket had that characteristic so obviously they are doing a ton of work. the third point that there
wouldn't be any competitive harm and i think that is clearly not correct we know that because of the same reason that companies should not allowed to be trademarked we just know that when that everybody needs to describe their goods focus on certain examples like container store it is a misunderstanding it was have to look at the register course or ticket management services so they are massively overstating what is going on there are hard questions on the margins but that is not reflective of the.com or the company but that at the first route to level.