Eating Your Cake

On May 5, 2020, the United States Supreme Court had its first teleconference oral argument in history.[1] It was a trademark case.[2] Here’s what went down.

Booking.com built a business on owning a domain that’s the generic word for their services. That has earned them a very strong position in their industry but has left them with essentially no trademark rights and no U.S. trademark registration. Booking.com is now trying to change established trademark law so they can eat their cake and have it, too.

Booking.com concedes that BOOKING is generic for what they do but argues that BOOKING.COM is not generic.[3] It’s possible for a domain name to create a different commercial impression than the domain alone. For example, TENNIS.NET for tennis equipment isn’t generic because of the play on words. BOOKING.COM doesn’t meet that standard.

Why do we care if they register BOOKING.COM?

Trademark law prevents companies from monopolizing language: You can’t give exclusive rights to the word “booking” to one booking company because then other booking companies won’t be able to describe what they do.

Booking.com B.V. argued that they don’t plan to use the registration to go after competitors like ebooking.com or hotelbooking.com. They said they need the registration to go after spoofers and cyberscammers.

First, I don’t believe Booking.com won’t use the registration to attack competitors.

More importantly, they have reaped the benefits of choosing a generic word for their brand. There’s no reason we should sacrifice fair competition to save them from the disadvantages inherent in their choice.

 

Thanks to Cassandra for suggesting this post.

 

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[1] The case was United States Patent and Trademark Office v. Booking.com. B.V.  The absence of the august chamber and the physical presence of the justices resulted in one tiny slip in the formality shown by the attorney for the USPTO:

Mr. Chief Justice Roberts: “Ms. Ross, why don’t you take a minute to wrap up.”

Erica Ross: “Sure. Uh. Thank you Mr. Chief Justice.”

[2] The case concerns four applications to register trademarks containing BOOKING.COM filed by Booking.com B.V. The examining attorney at the Trademark Office refused registration because the term “booking” was generic for hotel reservation services and merely adding the generic top-level domain “.com” did not change a generic word to a protectable trademark.

[3] That said, the general rule is included in the Trademark Manual of Examination Procedure Section 1215.05:

“Generally, a mark comprised of a generic term(s) combined with a non-source-identifying gTLD is generic and without trademark or service mark significance. In re 1800Mattress.com IP LLC, 586 F.3d 1359, 92 USPQ2d 1682 (Fed. Cir. 2009) (MATTRESS.COM generic for “online retail store services in the field of mattresses, beds, and bedding”); In re Hotels.com, L.P., 573 F.3d 1300, 91 USPQ2d 1532 (Fed. Cir. 2009) (HOTELS.COM generic for “providing information for others about temporary lodging; travel agency services, namely, making reservations and bookings for temporary lodging for others by means of telephone and the global computer network”).”

The Good Old Days

In the decade of the 1880s there were 36 applications filed to register trademarks.

In the decade of the 1980s there were 592,301 applications.

In the first decade of the 21st century there were 2,612,184 applications.

Those are some pretty astonishing numbers. In fact, there has been an increase in the applications filed every decade since 1880, except for the 1930s when there was a slight decrease, presumably because of the Great Depression.

But while the number of applications has been increasing, the percentage of those applications reaching registration has been decreasing.

Every last one of the 36 applications filed in the 1880s reached registration. Wonderfully, four of them are still alive today.*

For the 1980s, only 77% of them reached registration.

And for the first decade of the 21st century, only 54% of them reached registration. Here are the data:

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So, what’s going on here?

I believe there are two factors at work. First, because there are so many trademark registrations, the likelihood that a new trademark is confusingly similar to an existing trademark is much higher. It’s just a lot more likely your new trademark is similar to one of the 2,366,194 live registrations now than to one of the 36 live registrations back in 1889.

Second, there are a larger percentage of applications being filed without the use of an attorney. As a result, applicants are more likely to file applications that never stood a chance.

Bottom line: It’s hard to find a trademark that’s available. Don’t waste your money** filing an application unless you think you have a good shot.

 

 

Photo of USPTO © 2018 S. Elizabeth Birnbaum, used with permission.

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*SAMSON®; WASHBURN’S GOLD MEDAL®; one of the registrations for BUDWEISER®; and a logo mark for beer consisting of a triangle.

**There were 1.2 million rejected applications in the first decade of the 21st century. That’s about $361 million in wasted Trademark Office fees.

“Happy Talk” Law is Dead!

Today Simon Tam of The Slants won a tremendous victory for free speech.

If you’re feeling despondent about the state of the world, if you’re in need of a booster shot for enlightenment thinking, if you long to have the government bitch-slapped for stepping on civil rights, if you want to laugh out loud, read on.

The U.S. Supreme Court vehemently rejected all of the government’s arguments for preserving the “disparagement clause” that allows the Trademark Office to refuse to register trademarks that may disparage or bring into contempt or disrepute any persons, living or dead.[1]

Although the justices[2] supported different reasons for their judgment, all of them agreed that the provision is total BS, constitutionality-wise.

Government Speech Schmovernment Speech

The court started by rejecting the government’s argument that trademark registration is “government speech,” a category of speech not subject to First Amendment protection.[3] Here’s the court explaining why government speech is not protected:

“During the Second World War, the Federal Government produced and distributed millions of posters to promote the war effort. There were posters urging enlistment, the purchase of war bonds, and the conservation of scarce resources. These posters expressed a viewpoint, but the First Amendment did not demand that the Government balance the message of these posters by producing and distributing posters encouraging Americans to refrain from engaging in these activities.”[4]

The Court then hits the government upside the head with a baseball bat for its attempt to expand what’s included in “government speech.”

“But while the government-speech doctrine is important—indeed, essential—it is a doctrine that is susceptible to dangerous misuse. If private speech could be passed off as government speech by simply affixing a government seal of approval, government could silence or muffle the expression of disfavored viewpoints. For this reason, we must exercise great caution before extending our government-speech precedents.”[5]

Then, just in case the government didn’t feel the baseball-bat love tap, the Court took out the big ammo and blasted away.

“If the federal registration of a trademark makes the mark government speech, the Federal Government is babbling prodigiously and incoherently. It is saying many unseemly things. It is expressing contradictory views. It is unashamedly endorsing a vast array of commercial products and services. And it is providing Delphic advice to the consuming public.

“For example, if trademarks represent government speech, what does the Government have in mind when it advises Americans to ‘make.believe’ (Sony), ‘Think different’ (Apple), ‘Just do it’ (Nike), or ‘Have it your way’ (Burger King)? Was the Government warning about a coming disaster when it registered the mark ‘EndTime Ministries’?”[6]

Not Even if It’s Commercial Speech

 The Court next considered whether trademark registration is merely “commercial speech,” which is subject to a lesser level of First Amendment protection than non-commercial speech. The Court chose “not to resolve” the debate about whether or not it’s commercial speech “because the disparagement clause cannot withstand even the lower level of review for commercial speech.”[7]

“A simple answer to this argument is that the disparagement clause is not ‘narrowly drawn’ to drive out trademarks that support invidious discrimination. The clause reaches any trademark that disparages any person, group, or institution. It applies to trademarks like the following: ‘Down with racists,’ ‘Down with sexists,’ ‘Down with homophobes.’ It is not an anti-discrimination clause; it is a happy-talk clause. In this way, it goes much further than is necessary to serve the interest asserted.”[8]

In his opinion, Justice Kennedy sums it all up beautifully:

“A law that can be directed against speech found offensive to some portion of the public can be turned against minority and dissenting views to the detriment of all. The First Amendment does not entrust that power to the government’s benevolence. Instead, our reliance must be on the substantial safeguards of free and open discussion in a democratic society. ”[9]

Rock on, SLANTS. Rock on SCOTUS. Rock on RIGHTS.

 

 

[1] 15 U. S. C. §1052(a)

[2] C.J. Roberts, J. Alito, J. Thomas, J. Breyer, J. Kennedy, J Ginsburg, J. Sotomayor, and J. Kagan. J. Gorsuch took no part in the consideration or decision of the case.

[3] The Court also rejected various related arguments about lesser levels of government involvement in speech. Read the full opinion for details.

[4] Slip Opinion at p 13.

[5] Slip Opinion at p 13-14. Emphasis added.

[6] Slip Opinion at pp 14-15. Emphasis added. Citations omitted.

[7] Slip Opinion at p 24.

[8] Slip Opinion at p. 25. Emphasis added.

[9] Opinion of J. Kennedy’s at p 8. Emphasis added.

Mr. Tam Goes to Washington

Yesterday I was privileged and awed to attend oral argument in Simon Tam’s quest to register the trademark for his band, The Slants. Listening to great minds debate the First Amendment is powerful and inspiring in the way that few things are.

I arrived at 6:00 a.m. and was #2 in the line for attorneys admitted to the U.S. Supreme Court bar. Within minutes we were joined by three more attorneys who, unsurprisingly, were the attorneys for the Redskins.

Oral argument was spirited, probing, and intense. Justice Kagan asked Assistant Solicitor General Malcolm L. Stewart to explain why the statute prohibiting The Slants from getting a registration is not just flat out impermissible viewpoint discrimination. Justice Breyer pressed Mr. Stewart relentlessly to explain how the purpose of the trademark law is advanced by prohibiting registration of disparaging trademarks. Justice Ginsburg was troubled that the Trademark Office appeared to be so arbitrary, letting some disparaging trademarks to be registered, while denying others.

When Mr. Tam’s attorney took his turn, the Justices probed the upper limits of what should be granted a registration.

We can’t know how the Court will rule based the questions that were asked and how the argument went, but we can take heart that our rights and freedoms are a matter of utmost importance to the Court. If I were on the bench, I would strike down the “disparaging” clause as unconstitutional.

How would you rule?