Mr. Chief justice, and may i please the court, it is a fundamental principle of the trademark law no party can make a trademark for a generic term. As explained a generic term is never entitled to trademark protection no matter how much money and effort the user has poured into the merchandise and in securing public identification. In other words, second remaining as required for distinctiveness is simply irrelevant to the generic term. That principle here is undisputed that its generic for the Reservation Service is responding. They couldnt really register the name or the addition of an entity designation to an unprotected term doesnt create a protectable mark. Thats because the terms implicates those in the association oassociation or paro deal with the relevant goods. A doctor from obtaining a trademark enterprise and shorter party can monopolize a generic term. The result should apply to booking. Com. It is the online equivalent of company and can use only the services of a commercial website on the internet. There is no sound reason for the responded to be able to really register booking. Com as a trademark when it couldnt register booking inc. As particularly problematic how the internet works they can contain the rights to the domain at a time so the responded already enjoys a second competitive advantages, the brick and mortar equivalents booking inc. With black. It also means if respondents surveyed evidence is enough for the federal trademark legislation that nearly every other business can do the same. Domain names are oneofakind, significant portion of the public will always understand a generic term to refer to a specific business even if it isnt familiar with the particular business at issue. You mentioned the goodyear case, but you didnt quote the language from the trademark statute that is at issue here. That language says the primary significance of the mark to the public shall be the test for determining whether it has become generic. The goodyear case at a different test and 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 congress chose in the statute rather than a 130yearold case of hours. Mr. Chief justice, two points on that. First actually preserve the distinction between generic and descriptive terms and so generic terms it confirms and its in the definitional provision and then again section 1025 or 1052, excuse me confirmed they are never susceptible to treatment even when they acquire secondary meaning and descriptive terms may acquire trademark significance when they apply to the meaning so it is the sort of underlying principle of goodyear. Im moving to section 364 on the cancellation provision that you note. The primary significance rather than the purchaser motivation shall be determining whether the registered mark has become the generic name of the services. I think its the second that it was enacted in 1984 bits pointed to no case before the suggestion that it overturns. It was enacted in 1984 but that is a lot closer than the case that was 130 years ago. So i dont know why we would focus more on the statutory language then that old case. More to the point maybe if this is a generic term, booking. Com, it describes a category of goods or services. But when you talk about other categories whether it is travelocity, priceline, whatever, nobody refers to those as book. Coms. A few points on that mr. Chief justice. We agree that in the ordinary case one might use the term generic to understand how it will refer but i think that it could also be used in the same provision for how a specific entity would understand the term so for example in goodyear the court held that it couldnt be trademarked even though nobody refers to the class. The point here thank you, counsel. Justice thomas. Yes. A couple of questions. Could booking acquire and 800 number that is similar to 1800 plumbing which is a registered mark. Under the federal circuit decision, yes it could. Those decisions are debatable on the principles that we think are controlled but it does follow those decisions because of the right of the direct appeal to the federal circuit. I think that its significant they are distinguishable in the sense that the problem is that allows the responded to monopolize on the internet because of the fact they can include booking. Com but it doesnt as true as Something Like 1800 booking. That could be true, but i would like you to compare this to goodyear. With goodyear you have the generic term but also added the term any company could use. Now, with booking, there could only be one domain address so this would seem to be more analogous to the 1800 numbers that are also individualized. You are correct only one internet entity at a time can hold the rights. I think that works in our favor rather than the responded. It doesnt argue every domain name should get the trademark as i think would be the consequence of the position. I think the reason they do not do that is again then its good for Hotel Booking. Com and the confusion and analysis would also have to account for the fact that each of those is unique so they would line up with the same trademark protection. In the usual case of the trademarks, they want the ability but to exclude others from the same name and to exclude others from those that are similar because of the nature of the internet they already have the first advantage. So others cannot use booking. Com online and the competitors. The plaintiff in the case that really matters is the ability to block out competitors like Hotel Booking. Com and that is the type of anticompetitive concern the Court Expressed that if you allow one company, it is good to preclude others from calling it by their name and marketing it as they are. Now i think the judge explained this very well in the court of appeals. What the respondents want is something it couldnt get into brick and mortar world in the letter to adopt the generic name that allows them to get recognition from those that automatically understand what they felt. Thank you, counsel. Justice ginsburg. Two questions. First, is it right that dot com doesnt make a generic term non generic . So many are already registered marks would be subject to cancellation. I take it that there are dozens of dot coms that have been registered, is that so . I think they suggest there are far more. If i could make a few points on this. Its how they speak consistently on this point. So, by and large is being followed up and i dont think there will be a huge change. They do point to some examples but i think that those examples show a flaw and one seems to be the combination is always going to be generic and that isnt true. You always have to look at how the terms are being used so for example the responded it isnt a political fact. I would like for you to focus on cancellations. Who could apply to cancel an existing legislation . Wouldve they endeavor to cancel these remarks . I dont believe so, your honor. I think that the competitors could file petitions to cancel the registration and of course the fact that it was generic for a while to cancellation at any point. I think that those entities could have brought cases previously based on the federal circuit which was and is consistent on this point. It understates those that have been incorrectly registered and they do not have t dont have tt there will be a huge backlash. To explain a little bit more of why that is so, the respondent points to not just that example that i have another question i wanted to ask and it is a followup to Justice Thomas. It is a telephone number question, thats the federal circuit precedent that it would be our job in this case to deal with that if the federal circuit is wrong. You have another that would distinguish it from the domain name. Yes, Justice Ginsburg. Booking. Com can be encapsulated in longer domain names that it couldnt be another phone could be another phone numbers, so theres a sort of de facto reason. Justice breyer. On Justice Thomass question, you can have a trademark but its an address. You have a trademark that is a telephone number so why cant you have one that is a dot com . Its a very specific context we think that it is equivalent. All views is a website that tells you the type of service that is a classic usage. We think that follows from goodyear to balance the two competing interests. We want to make sure that the consumers understand the particular brand. On the other hand, we want to avoid the monopoly of the language and i think that is exactly the concern they have with the booking companies and its exactly the same concern that we have on the internet here because again by getting the trademark they must want to be able to block out similar names. Again because responding couldnt do that into brick and mortar world theres no reason it should be allowed to do that on the internet. You could have a sort of street addresses a trademark but that is fundamentally different because that isnt telling you anything at all about the services. They would have to work to bring up its recognition in the same way that a person that uses us to do. All of the components that go with it such as other competitors cant use that name and the consumers will go expecting to be the site even if there is no particular knowledge about the website. Justice alito. The do you think i should do is goodyear is a case from a different era and to send control here but also similarly it was enacted in a different era and the case law belongs to the era how can a rule that makes sense be reconciled with the language of the act . It is easily reconcilable and id like to go back to the chief justices question about the primary significance. The primary significance is in the statute to the remark considered distinctive so as you can see it is a very narrow rule to overturn the case but had applied a different context. Now it is true whether courts applied similar analysis and other places but that is because of the preexisting law simply think goodyear continues to control for the same reason the common law. But even taking the view outside to suggest you have a basic trademark policy that has always been true. The court recognizes that following the act citing the categories of the term and it remains true they try to make the balance between competition and Brand Recognition on the one hand and monopolization on the other. It speaks very strongly to the position because again it would allow them to monopolize any term. I think it is worth noting page 68 the test requires them to be generic so on their view it remains generic and the public continues to think of that as the fruit of the same color. I think that would be a surprising outcome into brick and mortar world on the internet. The other point with respect to the clarification of the significant i dont think it is the primary significance tests that separates the argument. Its much more that the test was always required moving to survey evidence. That isnt true under goodyear which is reconcilable because it rejected evidence that one has the best claim and that is consistent. Justice. Im sorry, chief. Picking up on where you are right now, is it your position that primary significance to the public is never to be used to determine whats generic and whats not and if we dont use that test in whole or in part however much they want, what are the thing in examiner for the book to . Isnt our position that they can never look to the primary significance. They didnt overturn the common law but what they should do in this instance is look to other sources to figure out the generic term that means whether it is going to indicate the type of good or service. But they should not do is give the evidence that as the trademark scholars explain it is going to cause an issue in these circumstances. Only one can hold the domain name and they are going to misrepresent the number of people that actually understand the booking. Com is a business because of the way the internet works. What they stop you there for a moment. I looked at your definition and basically one definitions of booking a hotel but this service is much broader than that. You can book a hotel, travel so that may be a problem with my looking at it as generic but my point being that if i look at all the evidence points to the car booking, hotel that a finder of the fact could conclude booking. Com is in fact related to one entity and not what has become the more descriptive word then a generic phrase. This wasnt presented here indicate are no longer contesting that it is generic for the relevant class. To go to the broad point a lot of respondents examples which is to say you are always looking at the particular category for which the goods or services are being registered. Good morning. One question first, you were advocating for a categorical rule in other words you are not saying that trademarks of this kind would rarely be registered. You are saying they would never be registered, is that correct . It depends what you mean by trademarks of this kind. Booking. Com. Booking. Com and other places where the combination doesnt add any additional meaning i distinguish cases like the court of appeals where theres a sort of interplay between the two words on either side of the period. We dont think those could never provide. It isnt presented here. If it takes a less categorical position it says they would typically not identify the significance bu but doesnt say never. Why is that . Why is there a difference between what the manual says . Is a very narrow category of the cases the federal circuit and the ninth circuit have recognized. I think that the respondent would do is expand the category to say basically every generic case is going to have this kind of evidence because people acknowledge how the internet works. In the your brief, you are not making the argument that people go around talking about booking. Com. Consumers are going to understand and convey additional meaning that would distinguish the resurfaces from others, i think maybe it was. So how does that go along with the categorical role . I think to the extent that it could convey to consumer additional meaning and really the only additional meeting that its ever pointed to is the idea that it points to particular website, that i think both of an assumption all figure of the internet which we dont give trademark protection in all the competitionbased reasons i was noting earlier i think that cant be enough to get them over the line, theyve never made an argument, the succeeds between generic and descriptive terms and if its a generic term that identifies the good or service or descriptive term told you something about a future or characteristic of the service, apple pie, generic for pi but descriptive sorry to interrupt, suppose you lose on your argument on a categorical rule, is there Something Else that you would like the court to include an opinion on how to evaluate registration claims for generic. Com which is categorical in a bridge too far, is there Something Else that we should be thinking about in terms of saying when it is the generic marks are registrable . A few points, we first think the courts should follow goodyear and what goodyear said was Generic Company terms without further specification to get trademark protection, thats a rule that were asking for. Briefly. Sure, i think we would want at a bare minimum the confusion analysis on the backend to be extremely sensitive to the fact that whats driving the intuition and that equally applies to its respondents competitor. Thank you counselors, justice. I would like to follow up on that and 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 to write an opinion that draws on employees to the sensitivity necessary in this area. A couple of points, the first even if the court did not think it controlled here as we do, they get very indicative of the right analysis in terms of the concern with monopolizing language lets put goodyear aside for the moment, i know you wanted to go there will put that aside for the moment, what would you have the court say. I would want the court to recognize as it commands, section 1052 en death that the generic terms generally are not susceptible to trademark registration based on secondary meaning and so respondent like all generic. Com would have to come forward with some evidence other than the secondary idea that its a term that tells means Online Booking agency that consumers have come to understand it is Something Else, i think wearing that description could have bad consequences outside of the. Com in the oranges and oranges inc. Where everything is now subject to survey. I want to support to make clear. I guess that leads to my next question and that is why our existing tools efficient because we do always in every case matches this area, take very seriously questions about consumer confusion and it seems like a lot of your argument on competition law policy issues is consumer confusion but the lando mack accounts for the and it seems like youre going to use for the generic term but the doctrine is designed to account for that. So why are there sufficient tools to address the concern that you raised and why isnt this just another example were intellectual property monopolization concerns, intersex and we have to respect the judgment made in this particular area. Judges corset, theres a lot in that question, my firstline intercourse is we think the tools are sufficient, they display in our direction, i think the fact that generic term cannot be trademarked even on showing secondary meaning is itself enough to resolve this. Moving on from there, you mention the risk of confusion, thickets notable that respond in their brief that we should get a trademark on booking. Com but if you booking a lot of that is because were unique, if you booking comes along, we should win within analysis because we were here first, i think its good for the goose, good for the gander if booking. Com gives trademark protection because its unique and it seems as though it should get equal protection because it too is unique. I dont think its a competition concerned are necessarily resolved under existing trademark law justice,. Thank you mr. Chief justice, good morning, respondent says theres no threat of a napoli with domain names because they are unique and they say they wouldnt in fact be concerned about you booking. Com or similar names, what are the real world practical problems that you foresee if dotcoms could obtain trademarks. Thank you, i think the real world tactical problem, one i dont agree to say that they wouldnt think you booking. Com were infringing, they go ahead and register but if it turns out there confused than we think we get the territory and you dont. I do think there is a very real risk of monopolization in that sense, other risks i think, responding is already getting huge advantages if and only it can control booking. Com on the internet so its asking for the privilege that no business would have in the real world of both getting the disaster booted advantages of using a generic name and also getting the back and trademark protection. I dont see why the internet context should permit that given that already gives respondents the huge advantages. I also think this is a lesser level but they presumably every other trademark every other germanium can get a trademark then youre going to have this problem where the trademark system is basically becoming a registry system and im not sure why rather than following trademark principles like generic terms can get trademark protection, no booking company, therefore no booking. Com the court would go about traction of having an idea for an internet generic. Com means. And respondent points out that there have been registrations of booking. Com and other countries that you, the united kingdom, can you respond to that. Sure, i think that may well be true, i dont think is particularly relevant obviously those other countries are not focusing or not constrained by goodyear as we think this court is and obviously give the land of max preserve of goodyear know something that you can obtain a trademark on a generic term even if it shows that the public has goods, thats all the respondent has. Thank you. Ms. Ross what you take a minute to wrap up. Sure, thank you mr. Chief justice. I think her basic points are simple, from goodyear. Com is simply the online version of Company Initiatives you only responded to operate a commercial website via the internet where booking can be made, we think its consistent with generic and descriptive term and with longstanding trademark policy, respondent we require overturning goodyear in the lando mack line between descriptive marks and for all those reasons we respectively asked that the court would reverse. Thank you counsel. Thank you mr. Chief Justice Amanda please the court. This case is how to tell the difference between descriptive names, the lando mack protects and the generic then act does not, the three reasons this should hold the primary significant test whether consumers primarily think the name or a potential brand, first the statutory purpose to let consumers decide which marx deserved trademark protection, first to protect, the act is always required in sections 1052, 1091 and 1127 trademark registration info mark helps consumers distinguish among brands, and other words the act to protect descriptive names which consumers find useful but it excludes generic ones which consumers refer to a genius. The lando mack that has unfair competition with descriptive but not generic names, right before Congress Passed the act, they adopted the primary significance test under unfair competition law to distinguish between generic and distinctive names. For the past 70 years, courts have embraced this private significant test to tell the difference and it was the universal backdrop in in sections 1064 to overrule departing from this test in the cancellation context, 1064 that reflects the ratification significant test to define the generic name and all context. The government has no other test for the dividing line other than primary significance. Second goodyear did not survive the lien of mack, route to branch, any per se rule that a violent is a generic of wall regardless of consumers use. For section 1052, 1091 and 1127 lets define generic names as ones that do not help consumers distinguish among brands because Everything Else much preregister. In the factual question about what consumers think is an purposes of a per se rule. 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 in this is not a cancellation case, this is a registration case, why should we assume that the primary significant test carries the weight that you would give it. Sure, like i just said the 1064 we think is the ratification of the law if you look at the dividing line between the generic and the descriptive term in this specific amendment was to overrule a decision that had come up in the cancellation context so it was targeted to the ninth circuit antimonopoly case, in terms of the primary significant test, if you ignored section 1064, and the one that looks to consumers think of the mark because three provisions a list of 1064 require registration of marks the help consumers distinguish among brands. May be one reason that congress put this in the cancellation section and not on the registration section is because they appreciated the significance of goodyear with respect to registration of marks. I dont think that could be right because again goodyear is a common law world, goodyear is a common longing world that is based on the principal under common law that no more can be trademark if competitors could equal truth hypothetically say that about the mark so goodyear by its terms interchangeably uses the word generic and descriptive marks and that was true because common law did not care, both were offlimits and so goodyear specifically said one company is no different than michael wanted pennsylvania wheat which are descriptive terms and they said there offlimits, this court in five cases at the time right after goodyear described goodyear as not only a case of descriptive terms but two cases lowers manufacturing which are cited on page 28 of the governments brief to equal truth principal. Thats where the government i dont think it meant to better basically says booking does not deserve a trademark because everyone with equal truth can be a booking company. Theres a lot of companies that use booking in the second level domain, he booking. Com, Hotel Booking. Com, your booking. Com, travel booking. 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. Isnt that something should take into consideration. Issue should take into consideration with all marks that are descriptive, bottomline position that. Com mark should be treated the same but theres three reasons why you should not worry about what the government and concerns about antimonopolization. First, the concerns are just in a brief, they dont give you not a single example of harm despite the big woody of generic. Com marks in the fact that booking is registered in 85 other countries including ones your second and third reasons can you know so. Let me get to the third reason which is the legal reason in terms of why it does not crowd out. The more descriptive of mark is, the harder it is for that mark to show a likelihood of confusion, requisite element in any infringement claim. Thank you counsel. Justice,. Thank you chief. Just getting back to the chiefs question, you seem to rely almost exclusively on the primary significance test that you need that test in order to prevail . No regardless of what do you think of our test, the government cannot be right, three statutory provisions that dont mention primary significance test overrule navigate and completely eradicate any notion that you could have a per se rule that would ignore what consumers think which is why the court needs to primary significant test, it just said you dont have the common law bar against trademarking colors, its a factual question of what consumers think, do they find the mark useful. So we went under three provisions, i think the other problem putting aside the three provisions is theres a whole separate problem that the government has that theres two provisions that require courts to look to how consumers would view the market as a whole and not its component parts. So you cannot just think because wine is generic, companies are generic, when companies are generic and thats the same with the word container and store, you put the two together, booking. Com you put the two together and you have to look at the way consumers view that as a whole. That also advocates a role. You dont need significance to know the government is wrong. It so happens every court has said the primary significance test governance. The ptos manual says it, its a test that was applied in this case and if i cant get to do something devastating for the government is her appendix. There appendix of rejected marks is not goodyear, its based on the primary significance test, go look at the records at ad. Com bedandbreakfast. Com, booking. Com, newspaper archive. Com. There is no goodyear, its a primary significance that was the expensive record about how consumers would proceed the mark. Our appendix is not the same, is not based on mistakes, weather. Com, tickets. Com, dating. Com, wrestling figures. Com and another bedandbreakfast mark, the pto located extensive evidence, was not a lazy pto officer was somebody looking at the primary significant test and saw im see the consumers see whether. Com is distinctive, it deserves registration. So the status quo is a primary significance test and thats whats been this should also give the chief and Justice Thomas some comfort that most marks flunked the test for some dont. So you make the government relies on goodyear and you say theres been a sea change in trademark law since goodyear particularly would you just explain briefly how you think the lena. Has expanded the trademark law and what is protected and what is not protected. Sure, its a basic overhaul in the sense again, these are the five Supreme Court cases that are cited on 37 and 38 of our brief and all the little chestnuts, canal company, these are famous trademark companies that are all about the bar on descriptive marks, you cannot, could not, may not trademark or pennsylvania wheat or whatever the typewriter was, you cannot do it because everybody has an equal right to say they have a particular characteristic. Thank you, justice ginsberg. If you have the same name then the consumers will know that the word. Com will give particular thoughts. But also if you tell somebody that one particular source and you dont argue the generic. Com is always potentially trademark ebola, so when was the generic. Com remain genetic. In terms of when it flunks the primary significance test, in addition i talk and give you some examples but the site so they gave you from the government appendix are good examples of how generic were. Com flunked it. But lets look at several examples, and our survey the majority overwhelming majority from the washing machine. Com or generic and you had over whelming number referred to the travel website that used around the globe, another example of a common sense example that i can give you is that sometimes people think of generic word. Com generically. I have searched every grocery store. Com looking for put the paper and i looked every hardware. Com, using food delivery. Com from a take out these days, those are generic usages of a generic were. Com. And i think the example on the ppos better base versus our example show you let me correct for the record, survey evidence is never dispositive, uas look at any and all relevant evidence of consumer usages and if theres evidence from newspapers, consumer survey, dictionaries, trade journals that give you reason to suspect a survey is either unreliable or you dont have to credit it then dont credit it. The generic. Com mark loses as a factual matter because the evidence is ove otherwise overwhelming that it flunks a primary significance test, is just here the government dropped and tried to argue the survey was unreliable but a way that in the court of appeals. The District Court said im not just relying on the survey im relying on all the evidence and the lack of pto the other cases will turn out differently. Can i ask you another question, if passing often other services as your service is what you really concerned about, white is an unfair competition law affords you adequate protection. Mainly the reason is because were a business, we want the same competitive rights that every other travel agency has prebuilt specifically. Com marks needs sections 11, 25, dmd to particular because it allows proceedings. If you have a cyber scam, they largely rise overseas and the person is beyond the jurisdiction of the u. S. Courts and what the lanham act as if youre trademark it allows you to sue the domain name and basically shut it down and all these other cyber scams are prevalent on the internet. But i do think even if you do not have the internet for specific reasons, theyre not secondclass citizens, they deserve the same trademark registration rights as any other company to protect against outright counterfeiting and infringement. Thank you counsel, Justice Breyer. Thank you, can i direct your attention on the trademark, its 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 is not supposed to create monopoly power or market power beyond that. Here the power, youre trademark is exactly going out of the fact Everybody Knows there is one column with one name. If you could do in the future, you dont have to worry about searching the internet for toilet paper from Grocery Stores are calm. There will only be one Grocery Stores. Com recognize one and only one cookies. Com, flowers. Com, et cetera. Second, the problem is maybe not so bad if that was the only thing that they could use. But theres going to be lawsuits when its ip to. Com because thats Italian Pizza or f flowers. Com because its Fresh Flowers or ebook inside comp. So were creating an area of expert acidity that goes well beyond the name. The third thing that they bring out is in fact identification that you have talked about grow simply from the fact that loads of people now know that each Internet Company has one name. The interesting thing about your survey is not the 73 of the people who think booking. Com is a cynical company but the 33 of the people who think washing machine. Com is a trademark special company, which it is not in they do that because they know about the internet. So youre taking internet power, not just advertising or commercial product and multiplying there. And the fourth thing what Justice Ginsburg said another way to achieve your results, unfair competition law. Now thats a law, i want to hear your answer to those points. First its a statute, the statute decided the policy decision and if we meet the definition of a trademark we get register. Second as a policy matter, the brief is wrong, if you look at pages 94 of the record, that was the governments expert story, their narrative, the judge rejected and if you look at pages 164 and 167 of the joint appendix, our expert trashes the methodology and makes fun of it and says take out, remove every Single Person who erroneously thought washing machines. Com was a trademark and you still get a 64 which is huge Brand Recognition for booking. Com. Third, the government appendix destroys argument, they reject these marks day in and day out who dont get register. Fourth reality disgrace the rock document. I dont see any. 27 28 sites rent. Com, tickets. Com and travel. Com and then sites we ran out of room to put them all. It is in this, the notion that anyone was being crowded out is silly, one thing they can explain someone complaining but the indicating of the trouble marks in the ticket marks and the rent marks. Thank you counsel, Justice Alito. What would your position be if companies that had and took booking. Com but made very slight variations about trademark protection. That is finding white ebook he we dont object you booking, its not a problem i think its for the two reasons if i finish, its exactly what Justice Gertrude said, the sentence allowed to under 1115 c4 that anyone can use the registered name, here would be booking or booking. Com to describe their services, no liability and also mccarthy has a huge thing on this that the more descriptive the names, these lawsuits just dont work and thats true with the. Com marks, alzheimers has a foundation. Your client would not object to the registration of any trademark the simply made a slight variation in booking. Com, that would be fine, all those companies could register the trademarks . They are because theres a million different booking registration. Answer the question. Yes. They dont and have not and will not. If there was fraud in somebody ripping off the goodwill based on booking. Com, aim sure they would want to sue but it would be very hard to bring the lawsuit. My concern with your position is exactly what i think Justice Breyer just suggested. You are seeking a degree of monopoly power that nobody couldve had prior to the internet, ticketed company could not of 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 to even more advantage by getting trademark protection for that. If i turn to the company, it is not true, the company which is registered to celebrating his 50 year anniversary, its also the whig company in the wake shop in the whig store, its not like whig company has crowded ot wig companies, theres many places that sell whigs just fine. Its like any generic word. Com has crowded out, whether. Com exist with accuweather. Com. There are so many law. Com variations that are registered and not sued each other and no one is complaining that you just type in law. Com into the database and you will see it, theres a lot of register names, that is fine in terms of saying thats what the pto does but the fact that they dont have any anticompetitive harm seems to me you would not want to write an opinion destroying the billions of dollars of goodwill thats been built up and not just. Com marks but in Company Marks and if you extend goodyear past corporate designation, the governments fight it, Company Names and association or a partnership,. Com is not a partnership, its a store to buy stuff. Thank you counsel. Justice. I am troubled as Justice Breyer and Justice Alito are at the monopoly situation but im also troubled by what is the role that you want the po to follow they cannot trademark underlie generic names. Are they required now to run their own Consumer Perception surveys to determine a particular name is generic. How are you okay with the existing role that i think Justice Kagan read before which is that there is no per se rule but how is it going to change pto practice and wont lead inevitably to the registration of every single common name of every business and then an expensive legal strike on whether its become generic or not. I 100 agree with Justice Kagan, the view is the status quo which is the primary significance test and what the pto manual says and what the pto has been applying which is why our air appendix in the government appendix are consistent and shows the pto, day in day out rolling up his sleeves applying the significant test, you do not have to have a survey, the pto looks intensive evidence and says this is consumers that would see this as referring to any place on the internet the cells is good, youre not getting registered about the end of the story and thats why a lot of the marks ends up on the rejected list. On our list when they lead and whether. Com they look to different evidence and said whether. Com has a big consumer fan base and has a primary significance of being a brand. So we have to register that, thats good for consumers, you want consumers to know when they go to weather. Com theyre getting whether. Com not accuweather. Com and same way with the dating. Com. I hear you that youre worried but the pto is up to the task, this is what they have been doing and we had the. Com marks that even register from the late 1990s and 2000. If this is a factual question ended this record is not to give the pto difference, then what were going to have is every District Court reweighing all of the evidence that the pto looked at and frankly im on the margin with respect to your mark because i wouldve looked at car booking and Hotel Booking and all those other bookings and said this really booking standing alone is generic even with. Com. Now you point to the study but you seem to be saying that a District Court who ruled the different way would be wrong as a matter of law, could that be wittingly surveyed ever be dispositive. No longer be clear, a District Court in a sound like we wouldve lost had you been the trial court could rule that out. I did not look at that entirely. You could. We couldve lost that the court level, thats a risk you take, a lot of people go the federal circuit route because they like federal circuit law and you take a risk and go to District Court when you think young good evidence. Thank you counsel, Justice Kagan. Good morning. What strikes me is something along the same lines of what struck Justice Breyer and alito, it seems that theres a disconnect between the primary significance test in these kinds of names, the primary significance test is asking did the consumer understand something as referring to a category of products or instead of a particular product or service. These names by definition are unique and Everybody Knows this area unique. So if you apply the significance test to these completely new unique, wont you get a biased and the results . Is not true of the survey, the Telephone Survey and more things will seem to be registering and really thought to be. Great question, i think i can clarify this for you. Just like the company or wig. Com, they can be generic for wig companies and weak producers. As doctors you have to say the wig company, no one thinks the way company is referring to wigs it would be generic for type of company, thoughts is the category of goods is the category of the sellers. If utica booking. Com is no different than a Container Store, you can say its so unfair that the Container Store, there can only be one Container Store, the same way with. Com, youre right about the internet address but if every. Com even peers Hotel Booking because you would always win under the fear that it can never be generic. So courts have been doing with two decades release the pto that were treating the. Com like house marks, Association Marks let me ask another question that goes back to what Justice Alito said and you said to him in the chief justice, you would not assume he bookings or Hotel Bookings or any number of variance on the name, who would do so, what is the. Com going to win the trademark suit . I have not seen any, the same reason the Alzheimers Association and the paper stories in the paper months are not suing each other because they lose. These suits dont happen but why people want trademark registration is twofold, outright counterfeiting because booking. Com is a popular name and we dont want people ripping off her store opening up, i think if you read the card. Com, they show car dealers putting up signs calling themselves card. Com. That is called ripping off and theft and not with the Trademark Laws are all about, secondly they wanted for the 1120 5g, specific problem with cyber scams and that is definitely what the internet refers are saying, that the actual booking cares about, it does not like internet scams and cyber scams its killing its business and ruin interpretation because someone in fracture internet and destroys your identity. Thank you counsel, justice je the governments concerns about the competitive advantage are minimized or mitigated by the fact that marks like booking. Com are relatively weak. Because youre putting together two generic terms. And consumers may well have your company in mind when they see that, you have evidence and you can argue about how good that is. But there may be no consumer confusion and that may also be true with you booking a Hotel Booking, consumers may or may not depending on the facts how particular companies in mind and the relative weakness of the mark is your answer together with the fair use doctrine in the governments monopoly concerns, is out of her summary . Much better than i said. Will you expand on that please. Sure the reason why theyre so weak and why mccarthy has a whole chapter of every lawsuit were simply worded marks cannot sue for others, lets take whether. Com and accuweather. Com, it turns out that consumers when you have very descriptive marks like both of those that are registered, consumers become very condition to focus on the different so they know accu is different, if you look at booking any booking, consumers would focus on there is the east site, i want to go to the e1 so its very, very hard to show the confusion because the more dissimilar the mark is, it becomes extremely impossible extremely unlikely to prove that and its not specific to the. Com context, is the same problem that every mart shop source, place, collective trauma theres a million dogs marks, a million coffee marks, coffee marks, they all have different store shops very similarly worded, they never sue each other. And if they do they lose. Im not making it up, they had a whole brief of lawsuits. Can you address a little bit more on the record, i know were not the trial judge but Justice Breyers point, i think 74 of consumers recognized booking. Com as your client but 33 think that anything. Com isnt a real store, as i understand about 41 of the net basis recognize remark, what we do about that, what should we say in this opinion if anything brother standard is not the fact. So you brought the question of the governments briefing but you never read our expert. That software. You dont take 74 and subtract 33, is just based on a very lack of understanding of survey methodologies, you let off the participants, use a washing machine. Com was a brand so were going to take it as a survey, 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 the extensive discussion. I understand that, im trying to extract the level up from the fact in the guidance as to what the court should say with respect to the survey methodology if anything. Briefly. Im sorry, what i would say is a survey constructs the consumers the participants ahead of time that supplies. Com is generic and if they did not understand that they cannot take the survey, staples. Com is a brand and office supplies. Com is generic justice,. Thank you mr. Chief justice, good morning, i want to make sure what i understand what do you think about our president and goodyear exactly, to the principle of goodyear still have some value outside the. Com context in the classic Company Context in which that case arose because the. Com are unique orders your position more broadly the goodyear has no value anymore. Awful bike that you certainly should not extended to. Com but if you took goodyear at its word, you are killing nonprofits because of the association problem, goodyear in terms of the opinion means association and thats how nonprofits identify themselves. So we have a coalition or society and you have the amputee coalition, the christian coalition, theres so many of these associational marks that i think goodyear would destroy in addition to Foods Company or Container Store, i just want to say one thing about the government making fun of the cheesecake factory, that is not a little house, theyre actually dead when they need them in the government that crab house was generic. So if you go down the road of thinking that certain words are offlimits, i think youre creating a real mess that is very unstable and principled and unworkable and unclear. Picking up on justi justice s of kate gunter questioning that we will lead to most every. Com business with goods or services will be able to obtain a trademark, maybe in other wordsr position leads to another bright line rule, maybe thats okay but is not wrong and if so when would net. I think it is wrong but i hear six of you concerned about us i 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 in all those examples i gave in the beginning with all kinds of examples proving that generic word. Com funk the primary significance test, i looked past it and if were worried about a survey biased. We have a whole brief of survey experts saying this is a great survey. So i hate to trash our survey, a lot of people thought our survey was great, its a classic survey, also to take you to waffle house, waffle house there was a side of the survey, the pto said it was generic and waffle house came with a survey and trademarked it. So i dont know why. Com is having scary and it should be treated differently because of the fear that all. Com marks have an advantage because of a website. The pto has been doing this for two decades now without a problem. Thank you counsel. Ms. Wallace you have three minutes for rebuttal. Three minutes for rebuttal. Thank you mr. Chief justice, sorry about that. If i could just focus on three main points, to operate from the presumption that the lanham act in the opposite that we usually think about statutory change, just a couple weeks ago nine justices look to the common law to determine what the lanham act preserved and i think the same should be true here, particularly so because of the respondent site with the geographic terms and descriptive term, congress was clear when it wanted to overturn the lanham act precedents. In the primary sickness evidence from a particular think i heard my friend to suggest that kellogg itself that it was inconsistent with the position that they take on 22 of their brief and kellogg actually discussed the primary significant test to determine when a descriptive term we get protection under unfair competition law so thats entirely consistent with the view here that generic terms are never susceptible to trademark even with showing the secondary meaning has been met. We think the primary significant test exists which includes goodyear and i think respondent points to this idea that the pto has defined the primary significance test, goodyear gardner understands that a generic term cannot be made into a trademark simply by showing a bunch of consumers think its associated with a particular mark or particular brand. Now responded examples proves the point and theres a lot of backandforth about washing machine. Com versus booking. Com but what is really instructive, washing machine. Com versus supermarket, 33 thought washing machine. Com was a brand name, 0, not a single survey responded and thought it had that characteristic. Clearly the. Com context is doing a ton of work on responders. The third point the respondent had is that there would not be any competitive harm from respondents, i think thats clearly not correct, we know that because the same reason that we know booking company should not be allowed to trademark, we just know when the trademark law is not supposed to take terms off the table that Everyone Needs to describe their goods, i think it focuses on certain examples like to get dark, Container Store its a misunderstanding that you have to always look at what those are registered for, the ticket. Com for example particular managers services not for tickets generally. Their overstating was going on and theyre making hard questions at the margin boat something whether my container tickets is using in a generic sense but is not reflected of the. Com or the company is that the first root level. Finally if theyre not going to ebook. Com and hotelbooking. Com its really unclear what they want out of this, ripping off respondent referred to is covered by unfair competition. In section 1120 5g which they presume that you have a preexisting trademark like kodak or xerox or teflon in the old days and someone goes along and get to trademark. Thank you counsel, the case is submitted. Cspan washington journal, live every day with news and policy issues that impact you. Coming up Tuesday Morning will discuss the Airline Response to the coronavirus pandemic with sarah nelson, International Association of flight attendants. Then the discussion of the Pandemic Impact on assistedliving facilities of the American Healthcare Association Doctor david gifford, indian gilding on the lockdown protest in a state and federal response to the virus. Wash cspan washington journal live in seven eastern Tuesday Morning join the discussion and be sure to watch washington journal saturday at 8 00 a. M. Eastern, were taking calls and questions from high schools across the country preparing to take the advanced placement u. S. History exams. Heres a look at our live coverage tuesday, the second day in a row the Supreme Court oral argument by teleconference on a case concerning freespeech and federal restrictions on aids and hiv funding for foreign affiliates of usbased groups. That is live in tinian eastern on cspan. Then afterward the National Constitution center reviews the case with legal scholars and then in the afternoon the Senate Banking committee hold the confirmation hearing for pending nominations including the treasury department, special Inspector General with pandemic recovery, theres also confirmation hearing on cspan2 at 9 30 a. M. Eastern for texas representative John Radcliffe who has been picked to be served as an extractor of national intelligence. And at 11 00 a. M. The senates back to consider the nomination to be head of the National Counter intelligence and security center. The National Constitution center reviewed the Supreme Court oral argument in patent trademark versus booking. Com. The case concerns booking. Com fight to trademark its website and whether company can trademark a generic term by adding. Com to it. Due to the coronavirus pandemic the Supreme Court heard the oral argument Via Teleconference and permitted live audio broadcast for the first time in history. National Constitution Senate president and ceo Jeffrey Rosen moderated the discussion. Im Jeffrey Rosen the president of the National Constitution center which is a beautiful building that you see behind me located in philadelphia, on independent small right across from th where the constitution was drafted, unlike cspan its a private nonprofit with an Inspiring Mission on congress. Our mission is to disseminate information about the constitution on a nonpartisan basis to increase awareness and understanding of the constitution among the american people, with that in mind
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