Good morning! Tejinder Singh from Goldstein & Russell here, liveblogging from home. Looking forward to calling the play by play.
For those tuning in, this is the first teleconference oral argument, in U.S.P.T.O. v. Booking.com. The Court issued a press release on April 28 with details of how the arguments are going to go. Basically, the Court is calling all counsel to join, and when the argument begins, counsel for the petitioner (the government) will get to go first for a couple minutes, and then the Chief Justice will get to start the questioning.
This is Jessica Litman, from the University of Michigan. Hi Tejinder!
And we're underway! Erica Ross for the government is delivering her opening, arguing that the word "booking" is a generic term for what Booking.com provides, and that the addition of ".com" doesn't add anything, but would interfere with competitors' ability to use similar domain names. So far, this isn't so different from the Court's new practice of allowing each party to talk for two uninterrupted minutes before questioning begins.
And the Chief Justice is in with the first question, asking whether the government's principal case, Goodyear, has been superseded by the Lanham Act.
Congress enacted the provision that the Chief is focusing on to overturn a 9th Circuit decision finding MONOPOLY generic for real estate trading games. Courts haven't generally relied on it to decide whether a term is generic before registration.
One of the undercurrents in this case is whether the Court's precedents are going to remain good law. Obviously, the weight of precedent is one of those cross-cutting issues. The Chief Justice's opening question adds another data point to the mix about where he stands about when a case might be implicitly overruled by a statute.
Ooooh, Justice Thomas speaks!
His question is about why URLs like booking.com aren't analogous to 1-800 numbers, which can be trademarked, because URLs are unique. The government actually tried to use this point offensively in its brief, arguing that because URLs are unique, there's no need to extend additional protection to them.
The Chief Justice is managing the time, and just kicked questioning over the Justice Ginsburg. It looks like his role will be to police the traffic. I'm interested to see whether each Justice asks a question of each side, or whether some demur. Justice Ginsburg's question speaks to a point that Booking.com really pressed in its brief, which is that the PTO has registered a ton of generic sounding marks.
Justice Ginsburg is raising the question that ruling in the government's favor might require the cancellation of lots of currently registered marks. The government argues that there are many fewer such marks than Booking.com implies
Justice Ginsburg asks whether the Federal Circuit's 1-800-number precedent is wrong
Justice Breyer pressing the same question now. His tone suggests that he's really very happy to be back to arguments. Us, too!
Ms. Ross is now using Justice Alito's question as a springboard to address one of Booking's other major points of emphasis, which is the importance of survey evidence in trademark evaluation.
Softball question from Justice Sotomayor giving Ross a chance to explain what the statutory language does mean, and what other tests the PTO uses to distinguish generic from descriptive terms
Justice Kagan asks why the government's position is more categorical than the position expressed by the PTO's manual of examining procedure; Ross argues that they aren't really different.
So far everybody has at least one question--which is neat! Here Justice Kagan is hinting that a categorical rule prohibiting all generic.com marks may be in trouble, and asking the government to offer a fallback.
Justice Kagan's follow-up question invites Ross to explain how the Court should distinguish generic from descriptive terms if it rejects the bright line rule
Justice Gorsuch also wants to know how he can reject a categorical rule prohibiting generic.com marks while protecting consumers from confusion. This is a tricky question for the government because it will obviously want to say that those other tools are available (if and when it goes to use them later)--without tossing away the sentiment that risk of consumer confusion supports its position here.
Justice Kavanaugh asks Ross to identify the real world consequences of a decision in either direction. Ross argues that Booking.com is asking for trademark rights it couldn't get in the brick and mortar world
Looks like the Court is also going a little longer than usual in order to permit everybody to ask questions. So civilized!
Lisa Blatt is up now for Booking.com, arguing that the primary significance test is the right way to distinguish generic vs. descriptive names for registration purposes.
The Chief Justice invites Blatt to explain why the test for cancellation should be generalized to a test for genericism in all contexts. Blatt explains that there is no other test in the statute.
The Chief Justice is now playing the other side on the statute vs. precedent question he asked Ms. Ross, suggesting that because the Lanham Act only discusses primary significance in the cancellation provision, Congress intended to leave Goodyear intact for registration.
Blatt claims that all of the rejected marks in the PTO's appendix used the primary significance test to assess whether the marks were generic.
Justice Thomas invited Ms. Blatt to provide a complete explanation of how the Lanham Act overhauled the trademark law. The Chief Justice decided it was a good time to move on!
Here is a classic Justice Breyer four-part question, based on the brief filed by Prof. Rebecca Tushnet.
Justice Alito asks whether Booking.com would object to the registration of EBOOKING.COM or another narrow variation as a service mark. Blatt says that her client would not object.
A few Justices now have expressed concern that allowing generic.com marks would create potential for lawsuits. Ms. Blatt's response is that such lawsuits aren't happening right now, but they want the ability to bring them in cases of fraud. It opens up the interesting question of why they really want trademark registration if they don't intend to enforce the mark.
Justice Kagan asks whether the unique nature of domain names will bias the results of the primary significance test in favor of the domain name owner, and lead to the registration of marks that shouldn't be registered. Blatt responds that the courts have been dealing with the question successfully for 20 years.
A few questions (Breyer, Alito, and Kagan now--with Sotomayor saying she is also concerned) are also based on the intuition that .com marks get a lot of their brand recognition from the fact that URLs are unique, and not from anything the company actually does to create goodwill, or not from anything particularly distinctive about the company name other than the fact that it's a URL.
We've gone well over the hour now. One interesting thing about the format is that I think it's prompting the Justices to try not to repeat each other's questions.
Justice Kavanaugh asks whether the principle expressed in the Goodyear case has any validity in today's world; Blatt says it should have none, but if it has any, the Court shouldn't extend it to the internet.
Justices normally don't interrupt rebuttals--but I expect them to be especially quiet in arguments, like this one, that have gone over time already.
Thanks for joining us. There will be another argument tomorrow.
And that's our show! Thank you everybody for coming in to join us. I'm sure there will be plenty of analysis and debriefing here on the blog--both about the new format and about the substance of the case. See y'all soon!
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