Page 10 - Delaware Lawyer - Summer 2020

FEATURE
writ of certiorari to the U.S. Supreme Court, which granted the petition in November 2019. The Court postponed the oral argument originally set for March 2020, and reset the oral argu- ment for a historic telephone hearing on May 4, 2020, in view of the Covid-19 pandemic.
The questions from the justices at the oral argument were conducted smoothly and efficiently by telephone. Chief Justice Roberts led off the ques- tions, calling on each justice to ask questions in order of seniority and con- trolling the time for each side’s argu- ments. Every justice asked questions, including Justice Thomas, and Chief Justice Roberts did a remarkable job as the first Chief Justice in the history of the Court to preside over telephonic oral arguments.
The PTO urged the Court to follow its more than 130-year-old precedent in Goodyear’s India Glove Mfg. v. Good- year Rubber Co., 128 U.S. 598 (1888), and adopt a nearly per se rule that do- main names consisting of a top-level domain (TLD), when combined with another generic term, such as a generic. com mark, are generic and never enti- tled to registration, absent exceptional circumstances.
In 1888, in the Goodyear case, the Court held that adding “Company” to
an otherwise generic term cannot cre- ate a protectable mark. However, ap- plying the bright-line rule of Goodyear to generic.com marks seemed to trou- ble the justices. Chief Justice Roberts’ first question during oral argument highlighted one of the Court’s major concerns:
“Counsel, you mentioned the Good- year case, but you did not quote the language from the trademark statute that is at issue here. That language says that the ‘primary significance of the mark to the public’ shall be the test for determining whether the mark has become generic. Now, the Goodyear case had a different test, an absolute rule, and it seems to me that in trying to decide what Con- gress had in mind, it makes more sense to follow the language that Congress chose in the statute rather than a 130-year-old case of ours.” All of the justices seemed to recog-
nize that applying the Court’s prec- edent in Goodyear to domain name marks may not provide the correct an- swer to the issue before the Court. For example, during oral argument, Justice Breyer seemed perplexed by the PTO’s proposed bright-line rule that singles out generic.com marks: “You can have a trademark [registration] for an address, you can have a trademark [registration]
Justice Ginsberg raised concerns that a decision following the PTO’s proposed bright-line rule would result in cancellation of numerous registered “.com” marks.
for a 1-800 number, so why can’t you have a trademark [registration] for a .com?” However, Justice Breyer was the sole justice who sided with the PTO’s position in his dissenting opinion, as discussed below.
Justice Ginsberg raised concerns that a decision following the PTO’s proposed bright-line rule would result in cancellation of numerous registered “.com” marks: “The first question is, if you’re right that .com doesn’t make a generic term non-generic, how many marks, already registered marks, would be subject to cancellation? I take it there are dozens of ‘.coms’ that have been registered. Is that so?”
Justice Alito expressed concerns that, while the Goodyear case may not provide an answer to the question be- fore the court, the Lanham Act and the “primary significance” test also pre- date the internet age and may not sup- ply an answer for domain-name marks either: “What do you think I should do if I think Goodyear is a case from a different era and that doesn’t control here, but also think that the Lanham Act similarly was enacted in a different era, namely in the pre-internet era, and that the case law, on which [Booking. com’s counsel] relies, belongs to that era. How can a rule that makes sense in the internet age be reconciled with the
8 DELAWARE LAWYER SUMMER 2020