A Term We’re Going To Hear: Booking Trademark

The Supreme Court Case of USPTO v. Booking.com is just about everything that is exciting about trademark law. While copyright law has paired with telecommunications and patent law to be at the forefront of the interface of how law evolves to meet society’s needs as technology advances, this case reminds us that trademark law is never too far away from its siblings.

It is almost perfect that this case is the first case that is heard by teleconference. The reason for the change in structure is entirely unrelated to the case, but few cases in the history of the Supreme Court (on the subject of telecommunications or copyright law) could have been more fitting for the occasion. This is a case about interpreting a 19^th century precedent and a 20^th century statute when evaluating domain name of an e-commerce website as a candidate for trademark registration.

BOOKING.COM: PROBABLY A WEBSITE WHERE ONE DOES BOOKING.

The core question of the case is whether “Booking.com” is eligible for trademark registration. The USPTO rejected the application to register the trademark on the grounds that it is generic. In order to be registered as a trademark, the USPTO must conclude that a trademark is more than merely descriptive of a good or service. The USPTO found that “Booking.com” was a generic term for a website that one might go to in order to “book” reservations; the trademark merely described exactly what the service was, and therefore the application was rejected. Booking.com fought this, and the case made its way to the Supreme Court.

Now the trademark world waits to see if there will be a new ruling regarding the use of top-level domain indicators in trademarks.

The USPTO relies on the 1888 case about rubber manufacturer Goodyear, and the effort of that company to prevent other companies from using “Rubber Manufacturer” in their names. Booking.com argues that this case is superceded by a more recent Federal statute, and relies on the interpretation of the Lanham Act test for determining generic marks, the primary significance test, found in section 1064(3), according to Prof. John Duffy.

TRADEMARK TURMOIL

In a year in which most of the world has been turned upside down, the world of US trademark law has also been flipped by a few rulings. The 9^th Circuit has issued a ruling in VIP Products LLC v Jack Daniel’s Properties Inc.  on tarnishment that, some argue, departs from previous understandings about that doctrine. Only a few months later, the same Circuit Court handed down a ruling in San Diego Comic Con v Dan Farr Productions that raised concerns   

The ruling of the Court of Appeals for the Federal Circuit in In re Forney Industries is already seen as a direct rejection of a 1995 Supreme Court ruling (Qualitex Co. v Jacobson Products Co.) on the guidance for registration of color marks. Almost exactly one year ago, in Iancu v Brunetti, the Supreme Court overruled the statutory rule that offensive or immoral marks were not eligible for registration. Only two years before that, in the 2017 case Matal v Tam, the Supreme Court ruled that disparaging marks could be eligible for registration. Now, the Supreme Court has another opportunity to rule on trademark law. It is tempting to look to the previous two decisions to predict the ruling on Booking.com, but those opinions are probably not much help.

The Supreme Court turned to the treasured First Amendment when evaluating the last two trademark law cases. The issues in those cases emerged out of questions about trademark registrations, but the Supreme Court saw them as issues of free speech and constitutional law. This time, the Bill of Rights will provide no guidance on a narrow point of substantive trademark law: is the mark “Booking.com” generic or not? Surely, the Court must answer “Yes” or “No” and clearly establish a rule regarding the status of “.com” and whether two generic components can make a non-generic trademark! Well, the Supreme Court may find a way to avoid addressing the issue quite so directly.

Many attorneys are likely to see this as a case of trademark law. However, the Supreme Court may see it as a question of whether a 19^th century US Supreme Court case ought to hold precedent over a 20^th century Federal statute: Booking.com has argued that the mark should be evaluated according to the Lanham Act, while the USPTO maintains that the 1888 Supreme Court ruling in Goodyear Rubber Co. v. Goodyear’s Rubber Mfg. Co. justifies rejection of the application.

It is important for the Supreme Court to address questions of administrative law and set a clear general course for the interpretation of laws in the United States. However, the Supreme Court has shown that it can address substantive questions of material fact in questions of intellectual property protections issued by the USPTO:  six years ago, in Alice v CLS Bank, the Court explicitly commented on the technology and substantive concepts at issue, and held that merely using a computer as a tool to carry out the concept of escrow could not be protected by patent. It would be consistent with that opinion to attend to the substantive question of whether “Booking.com” is a generic mark, rather than ignoring the issue in favor of broadly interpreting the function of Common Law in the United States.

RULING ON DOTCOM-GENERICISM IN A DOTCOM WORLD

Although it is an accident forced by the conditions of a national emergency and a global pandemic, the fact that the Supreme Court held argument by teleconference is relevant to this case. For me, it is actually dispositive insofar as it demonstrates in the most unignorable fashion that digital technology is ubiquitous and inescapable in US law and commerce. If the true heart of this case is the assertion that the suffix “.com” adds something meaningful and not generic to a mark, that assertion drops dead at the moment a court is held in a digital environment to evaluate that assertion. The term “.com” is perhaps the most general, generic indication of an online presence. It is the digital equivalent of “Street” or “Avenue” and does nothing more than indicate address. If the addition of “.com” is nothing more than generic, and if “Booking” is also generic, the Court could only rule in favor of Booking.com with the claim that two generic components create more than a generic trademark.

IMPLICATIONS FOR A RULING IN FAVOR OF BOOKING.COM

Perhaps more important than whether the Supreme Court upholds or remands is exactly how the opinion is worded. Will the Court explicitly rule on the use of “.com” or other TLD appendages? Will the Court promulgate a broad rule about generic trademarks? I think it will not be enough for the Court to merely declare that the Lanham Act overrules the 1888 Goodyear case; I do not think the “Booking.com” mark is eligible for registration under either the Goodyear case or the Lanham Act. I do not think “Booking.com” can pass the “primary significance test.” Moreover, section 1064(3) is specifically referring to cancellation of marks already registered that become generic after registration. If “Booking.com” is a generic mark, it isn’t because the company has so thoroughly dominated the market that all consumers only identify that service with that name—it’s because consumers have a vague idea of what the word “booking” usually means, and they also have an idea of what “.com” entails.

I am not sure why the mark could not be placed on the supplemental register and then Booking.com can demonstrate acquired distinctiveness; as I understand it, the litigation has been replete with consumer surveys that should be sufficient to demonstrate acquired distinctiveness.

A viewer of a discussion on this subject raised a concern about the possible failure of Booking.com to maintain its domain name. The disconnect between owning the domain and owning the mark presents further complications to the business decision. Even if Booking.com wins, it would be prescient to pause and consider carefully whether a company should register its domain name as a trademark, even if the Supreme Court ruling would appear to allow it.

Brewer vs. Williams: Two Wrong Decisions Making an Almost Right Result.

     Cases don’t normally go to the supreme court twice. The disappearance and death of a young girl in Iowa  in 1968 led to a series of bizarre legal questions. A man turned himself in but refused to speak to the police until the police transported him from Davenport to Des Moines. While driving along the highway, one police officer spoke aloud about the concern that the murdered girl might not be found in time to be given a proper Christian burial. The man in the backseat of the car, Williams, essentially confesses and proceeds to show the police where the body was hidden.

     The first trip to the supreme court was on the question of whether the so-called “Christian burial speech” by the police officer constituted an interrogation. The court ruled, 7-2, that it was the kind of speech that a reasonable person would understand to be an attempt to elicit a response. Accordingly, it was an unconstitutional interrogation that violated Williams’ 6th amendment due process rights. The trial proceeded with Williams’ confession excluded from evidence. The prosecution discovered that the location of the body was in an area that was going to be searched by police (as part of the search-team effort already underway at the time of WIlliams’ confession). The case returned to the supreme court (over 2 decades after the murder) to address the question of whether Williams’ confession should be included in court because the body would have been discovered regardless of the confession. The Supreme Court accepted this argument, and so WIlliams’ confession was included again as a result of the newly manufactured “Inevitable Discovery” exception.

 

Let’s take a moment to consider the reasoning employed here. First, the supreme court found that a police officer talking aloud can constitute an interrogation. Then, the court held that if evidence is in an area that is going to be searched, its discovery is inevitable. This kind of reasoning allows the prosecution to enter as evidence things that are said because it was “inevitable” that evidence was found.

     There are three separate errors in reasoning and language. First, there is a distinction between cultural norms that constitute an question and linguistic norms that constitute an interrogatory. Speaking about the need for a burial cannot be linguistically considered an interrogation because no question or request is ever posed. To see this as an interrogation requires reading cultural norms of “the kind of thing someone might react to with information in our culture.”

     Second, the fact that an area was scheduled to be searched does not mean the discovery of an object in that area is logically inevitable. We have all had the experience of looking for something in a desk drawer or between the sofa cushions and not finding it- only to later discover it have been there all along. Searching an area is not equivalent to discovering all objects in that area. Furthermore, that an event is scheduled to happen does not logically necessitate that the event will happen. All manner of possible interruptions may derail plans.

     Finally, the finding of an object and the verbal admission of guilt are two distinguishable things. Even if the discovery of an object was truly “inevitable,” there is no connection that the admission of guilt was likewise “inevitable” or that the discovery of incriminating evidence would necessarily bring about this kind of admission.

The Metaphysics of the Corporation: A Nexus of Contracts.

The Supreme Court issued a total of 5 writings in Citizen’s United v. Federal Election Commission.  The metaphysical nugget at the heart of this politically charged case was whether corporations (and other legal entities without physical personhood) could claim certain constitutional rights or protections. The outcome, that a corporation could be considered a “person” and so have “free speech rights”, shocked many and was ridiculed somewhat. The core of the joke is obvious: a “corporation” isn’t even close to a “person.”

Corporations cannot be touched. They do not smile, they do not cry. They cannot get a driver’s license. They cannot go for a walk in the park. They are concepts. They exist as legal entities, as shorthand for a set of agreements. They are a nexus of contracts. http://en.wikipedia.org/wiki/Nexus_of_contracts

And yet, corporations can own assets, owe debt, pay taxes, and even die (no one escapes those certainties, right Benny F?).

So the metaphysical puzzle is presented: how do we assess the nature of the corporation’s existence? I’m interested in this question for two reasons: First, I think it is extremely similar to many of the questions of the metaphysics of cyberspace (things that appear to have ontological force without physical presence). Second, corporations and business entities are enormously important in countless ways to the developed world (and, in a different way, important to the developing world). I find it striking the Internet and the Corporation are the two most dominant forces of the 21st century and have (potentially) similar metaphysics. Politicians and jurists need to take questions of metaphysics and ontology seriously as entities and locations of legal importance become less obviously physical. When policies or rulings are handed down without proper reasoning, the door is opened for the kinds of rulings in which a person is prison is not found to be “in custody.” http://verdict.justia.com/2012/03/21/why-interrogation-in-jail-may-not-count-as-custodial-the-supreme-court-makes-new-law-in-howes-v-fields Courts are forced to work backwards from statutes and precedent to the facts before them, and if their starting point is problematic, those problems can be magnified in the court’s efforts to force the square peg (the law without proper basis or explanation) into the round hole (the facts of the case at hand).

The deeper joke is that the word “corporation” comes from Latin word “corpus,” literally meaning “body.” In one sense, the corporation is the joining together of many bodies into one unified body, and yet it has no actual body of its own. Why couldn’t the late-night comedians and pundits glom onto that hilarity? Or at least meet this level of humor:

“Corporation: An ingenious device for obtaining individual profit without individual responsibility.” -Ambrose Bierce