Prift with an Inspiring Mission from congress. To december sim nate information about the constitution on a nonpartisan basis to increase awarrens and understanding of the constitution among the american people. Justice holmes once said of the constitution, it is an experiment as all of life is an experiment. The arguments that youve just heard are technical. The kind that law proimples and journalists and citizens often dont listen to closely but we just had the privilege of hearing them live is so our job in the next hour is to unpack them and understand as thoughtfully and as nonpartisan a spirit as possible what the competing arguments are so that ultimately you, cspan watchers and friends from across the country can evaluate the arguments for yourself. I do want you to do some homework after this show, which is to read the briefs in the case. Go to the Supreme Court remember site. Supreme court. Gov. Youll find the briefs on the home page under the name of the case and after our discussion, you can really dig into the arguments on both sides. Make sure you read the briefs on both sides. With that introduction, its my great pleasure to introduce three of americas leading trademark scholars who will join us today. The Frank Stanton professor of the First Amendment at harvard law school. She filed a brief of trademark scholars on behalf of Neither Party in the booking. Com case. Margaret duncan filed a breach in support of respond ants in the booking. Com case. She is an ajugt professor at Chicago School of law and filed a brief on the International School of Law Association of economic and core religion is legal director at the Electronic Frontier foundation, which filed a brief in support of the petitioner in booking. Com. Rebecca, margaret and core religion, welcome to all of you and thank you some for joining. Thank you, jeff. Rebecca. Lets begin with you. First of all, congratulations, your brief was cited several times during oral arguments. The brief you filed on behalf of Neither Party but can you please, as concisely as possible, tell us what in case was about. What are the main legal arguments on both sides and what are the stakes in the case . So i think the core question the fact nt that consumers are likely to recognize something that is a generic term for a group of goods or services but has a prominent provider so people are likely to associate the provider with the generics term. At what point does that become some sort of forcible trademark right . Theres a counter vailing concern that at a certain point, if somebody really is associated with a term, then theres the potential for confusion if others you us the term. Exampleng. Com is a good because through marketplace success and advertising, it has developed a reputation but it also allows you to make bookings online, which is prumple what you would expect from any online servation service and so having control over booking. Com presents at least the potential from people doing other things like booking. Net. Its a significant judgment call whether we should give booking. Com basically a tiny little right and then see where the right goes in specific cases or whether we should say no, the game is not worth the candle, the risk that will be aserled anticompetitively are so great that it shouldnt get a tiny little right at all. This is a big question in American Intellectual law generally. Jeff issue thank you so much for that. So i hear you say this question of by putting dotcom at the end of a flame whether you should be able to trademark it. We heard in the argument a lot of discussion about what the relevant legal source of north was. On the one hand the Trademark Office argued that this case called goodyear from the 1880s said that generally you cant trademark a generic term like rubber. On the other hand, the respondent said this federal law passed in the 1940s and amended in the 19 80s came up with a different test, which was is the primary significance test. Would people see it as a generic phrase or as something associated with a particular brand. Those are the kinds of arguments we have to unpack and im going to begin in the order ma the courts did. Friends watching on cspan, the first party is called the petitioner. E second one is called the respondent. Here the petitioner was represented by ericka ross and the rerespondsent was booking. Com. Were looking lucky to have core religion, who filed a brief on behalf of the petitioner. So glad youre here and i want you to distill the essence of the petitioners arguments as you understood it at the ends of the case. Ericka cross ross summed up the claim that a generic term cant be turned into a particular trademark by showing that a number of respondent think its associated with a particular mark and she said the wellmont question that the secondary meaning of the way people understand it is irrelevant. Its never trade marketable by addsing Something Like dotcom at the end of that name. Distill for us what, in your view, the petitioners core argument was . Ill do my best but i would be remiss if i didnt note, it was interesting that first of all we had two women arguing on either side in this historic moment, which is exciting. And then this panel is also all women and i think thats noteable and exciting and worth acknowledging. Jeff yes. So into the i think the key to the petitioners argument is this. It says that under goodyear, law from 1888, its pretty straightforward that if something is generic thats it. Full stop, were done. You dont have to get into the primary significance test necessarily. That is something youd think about talking about whether something is descriptive or not. But thats not what we have here. Two generic terms. Dotcom purely generic. Booking fully generic. We dont have to get into surveys and all of this stuff. The p. T. O. Can make a decision why this is a purely generic term and were done with the arguments and thats essentially what happened here and i think what was interesting to me is as i was hearing the justices really struggle for a rule. I dont know that theyre comfortable saying that goodyear controls for the internet but not even saying that theyre comfortable that the controls for the internet. I was really hear act sort of groping for how they should rule recognizing that whatever decision they make is going to have enormous consequences for trademark law in a domainname system. I thought it was interest interest very interesting that on the one hand there was a little discomfort from what i heard following goodyear. You can follow it was the argument we made. But also i heard discomfort following the respondents interpretation of the lamb act. Jeff it was indeed interesting and it was justice aloito who raise that would point. He said what do you think i should do if i think goodyear is from a different era and doesnt control here but the other also makes sense in that era but perhaps not in our own. Margaret, can you sum up in your view the essential argument that the respondent booking. Com was aking. And blast your response to jufrls alitos question . And i wrote a brief on the behalf of the university of chicago. Our test, what does the particular trademark, which are lot of times generally trademarks, does that have a primary significance for those particular goods or services as a brand, as a trademark thats protectable under the statute. Is that word primarily just a generic term . That e problem is, should be a very bright line test or a flexible test . Is actually inst the trademark statute itself, 15 u. S. Cold 10643 and that test says we look at evidence at what the primary significance of that particular term is to the public i. P. ve been practicing in law for 39 years and we always look at the evidence. Its a factual question and determine that answer. We dont use or we havent used i dont think any Circuit Court uses tests to just say stop, youre out of the game. Its generic, no trademark registers. I think theyve always looked at the evidence and used flexible ests, which is in the statute. Thank you so much for that. So part of the dispute is whether a generic term can ever be trademarked if it requires secondary meaning as tested whether people understand it or whether people come to know that a generic term as being associated with a particular brand shouldnt matter. Professor, your brief was crimetted several times. Its unusual for a single brief to be cited during both sides of the argument so collations to you but you had expressed some skepticism about the consumer surveys that were used and you noted as several of the justice did that washing machine. Com was stakenly viewed as a particular brand, which it wasnt. So tell us more about this empirical dispute and the legal consequences of the case. It really is a policy dispute. Im not sure that the statute actually analysis it. Its a question it that it turns out a bunch of people find difficult because its not a laypersons question. As a practical matter a dotcom is one source. Thats how the Domain Name System works so people dont any of it as having source significance versus nonsource significance so its a hard question to answer. Heres the way i think of it. Say you ask a bunch of people to solve a complicated math problem then you look at the people who manage to solve it and then ask some questions of them and the majority of the people who managed this solve it, a substantial majority, also get some other question right. Does that mean that most people got the question right . No. It means that most people who were able to understand this other concept got it right. Unlike most surveys, which disqualify a small percentage of people. Theres also some stuff that happens in surveys. People give wrong answers intentionally or accidentally or dont understand something, so you exclude them. Thats usually a small percentage. The problem here was etch after they trained people on the difference between cereal, a generic term and sell log. A trademark for a producer of cereal and even after they told people not all dotcoms are trademarks. 33 basically thought, yes, all dotcoms are trademarks and additional additional 6 werent sure. So 40 of people who had in theory couldnt comboment through this screen, couldnt make the distinction. Why should they . Its not relevant to them in their daily lives. So thats the question are sur vias a good way of getting at what were interested in or asking things not suit forward survey . I dont think the statute answers that so this is the question. How do we determine a what booking. Com means and actually the relevant law i think so the much more from a an early 20th century case about clog and shredded wheat. The issue there was that shredded wheat had been patented and people knew one producer of it so they tended to associate that with one producer. The patent monopoly ended and other people got to make shredded wheat. The court said in that case that even know theres a powerful association with one producer. The de facto thing, you still cant prevent other people from using the generic term. So i think margaret is absolutely right, that woe do do an empire cal study but we have also before as a backstop, sometimes the empirical reason is not enough. Sometimes if theres a good competitive reason to let people use it, we let them use it. So you can use the term but you have to use your own trade mark with it. Jeff thank you. Thats exactly what justice br ayer said. He said grocery. Com, pizzas. Com, flowers. Com. But flled be all sorts of lawsuits for i pizza. Com for talian pizza or i bookings. Com and that would create an area of exclusivety he said might create monopoly power. Ore religion, tell us chin, tell us one of our quest questioners asked what is the test mcshaharry asked. Can you explain it . And then tell us more about the anticompetitive concern. Youre concerned in your breach that if the court rules for booking. Com that no one will be able to use any name that includes booking in it if them hotels or other Similar Services and that would give booking. Com a huge and unearned mo nop i bli monopoly. Im not even necessarily worried about booking. Thats what is at issue here but its more a question of the precedent that this is going to set for other companies in other situations. When youeality is that have generic. Com, youve already gotten yourself an enormous commercial advantage, put ourself ahead of the game. We you make a choice. When you choose a name. You can choose a generic name and thats going to give you a certain kind of commercial advantage out of the gate because when people are looking for that kind of service theyll more likely go to you. Register with dotcom on top of that, youve cemented a power powerful advantage. But the trade off and is that you dont get a trademark in that. You get a commercial advantage but you give up another kind of commercial advantage. The test that i was referring to and this is the p. T. O. Argument but i think its one that makes sense. When we talk about the primary significance test and primary significance question and secondary meaning. Weve been talking about whether something acquires secondary meaning. That should come in when you have a descriptive mark but the argument from the p. T. O. When you have a purely descriptive mark, you dont have to get into all of that because really, again, it comes back to that choice that a company has made out of the gate that its going to choose one kind of commercial advantage, where it comes from, a generic choice with their name and giving up amount kind of commercial advantage that comes with getting a trademark. That, i think, is the key we ion here and the worry have, not just . Booking. Com that theyll register it for the generic name and then other Companies Wont be able to come along and compete effectively because the trade mark owner with own the generic name and the trademark and its closed off a huge amount of space. I think in an era we have right now with a lot of concern about the tech giants and competition in the online space, it seems to me as a matter of policy, any ruling that cements that anticompetitive situation is a dangerous one for the internet d thats who my organization represents. Internet users, Small Business owners who are really looking and we also generally try to protect Competition Online because we think thats how you get better innovation. The danger of this situation is youre going to undermine that kind of competition. Jeff thank you for that. This primary significance test should be relevant for a descriptive mark but not for a generic mark. If you have a generic thing like booking or weather, you shouldnt get into the question of how people understand it. Only when you have something more descriptive of the product being described. Margaret, what would be the against ce of a ruling you . Lass lisa blatt, arguing for the responsibilitient said there are already plenty of these, weather. Com, dating. Com and suggested all of those could be challenged. K and justice begins burg ginsberg said who could apply to cancel existing registerses . And that led to a question of whether trademarks like 1800bookings or as Justice Breyer said for a particular address could be challenged if the court rules against booking. Com so tell us about your response to the practical effects of a ruling against you. Right, i heard in the oral arguments and i want to also express that i thought both women did a remarkable job, an outstanding job on the historical oral arguments today and for the first time in the history of the court which is a difficult thing to do and did such an excellent job, which was remarkable for me. I do want to say that trademarks are tricky and whether a word is generic or descriptive is a factual issue and we need a test so that you can determine that answer, whether you are at the pen and Trademark Office or in front of a jury or a judge. I think a flexible test, again, works well. I think if you had a bright line test that said oh, this is generic. Were not going to look at the evidence. By the way, the evidence can be newspaper and magazine articles, it can be a dictionary defense, a lot of thifrpblts things. But in this case, the survey evidence showed that 75 of consumers, whether the survey was broad or not, that 75 of consumers in this particular survey thought that booking. Com was a brand, not generic. But the tricky part is theres a sliding scale of trademarks. Theyre there are very highly protectable trademarks that are completely coined words or arbitrary and fans if iful words with no real meaning. Then words like apple, if you have a meaning but combined with a service that doesnt have anything to do with apple the fruit, theyre highly protectable because an apple doesnt tell you that their goods or services are computers. Descriptive marks tell you something about their services but dont necessarily tell you completely what they are so if we had clothing that had apples all over it would that be protectable with the trademark apple because it does describe goods and services . Thats the question with trademarks. Thats why it would seem in all trademark law, a flexible test, which is what is the primary meaning of that word or term to the consuming public and is that just purely the generic word . Theres no other way to describe goods and services than that word or is it descriptive . And if its descriptive. A flexible test really worksd well to determine that. Because its factual. It really has to be looked at based on the evidence. Today. Im booking do you know if im at a football game, if i reserved a deny an airline ticket. If im just hitting the books hard and i was booking it today. Its really a faxal question that a jury or in this case, the p. T. O. Has to determine and i think the flexible test is the best one to apply. Jeff thank you for that and thank you also for noting what a suburb job both women did in the superb job both women did in he case and how striking how yevket effectual both were. Its a very intimate give and take, very cofferingsal. Here we have a formal running down of the jums in order. They all asked questions, including justice thomas. They were quite respectful of each other, said some jokes. But with the exception of a couple of times people getting on mute, it ran smoothly. Lets begin with the questions that struck you most significant. The very first question of the argument was that of chief justice roberts. He said counsel, you mentioned goodyear race but you didnt quote the language. The primary significance of the mark to the public shall be the primary criteri