SCOTUScast

US Patent and Trademark Office v. Booking.com B.V. - Post-Argument SCOTUScast


Listen Later

On May 4, 2020, the U.S. Supreme Court heard argument in United States Patent and Trademark Office v. Booking.com B.V., a case presenting the question whether the addition by an online business of a generic top-level domain (“.com”) to an otherwise generic term can create a protectable trademark.
In 2011 and 2012, Booking.com sought trademark protection for its web address name, “Booking.com”--but the U.S. Patent and Trademark Office (PTO) rejected the application. “Booking” was either generic and not protectable, the PTO stated, or else a descriptive mark to which the addition of “.com” was insufficient to demonstrate the “secondary meaning” necessary for federal protection of a descriptive mark. Booking.com filed a civil action in federal district court to appeal the PTO rejection and prevailed: the district court held that “Booking.com” as a whole was a descriptive mark that had acquired secondary meaning; that is, it was sufficiently distinctive to establish a mental association in the mind of the relevant public between the proposed mark and the source of the product or service. The PTO in turn appealed, but a divided panel of the U.S. Court of Appeals for the Fourth Circuit affirmed the judgment of the district court. The U.S. Supreme Court thereafter granted the PTO’s cert petition to address whether--given that generic terms may not be federally registered as trademarks--the addition by an online business of a generic top-level domain (“.com”) to an otherwise generic term can create a protectable trademark.
To discuss the case, we have Art Gollwitzer, partner at Michael Best & Friedrich LLP and Zvi Rosen, Visiting Scholar and Professorial Lecturer in Law at George Washington University School of Law.
As always, the Federalist Society takes no particular legal or public policy positions. All opinions expressed are those of the speakers.
...more
View all episodesView all episodes
Download on the App Store

SCOTUScastBy The Federalist Society

  • 4.5
  • 4.5
  • 4.5
  • 4.5
  • 4.5

4.5

106 ratings


More shows like SCOTUScast

View all
WSJ What’s News by The Wall Street Journal

WSJ What’s News

4,326 Listeners

FedSoc Events by The Federalist Society

FedSoc Events

88 Listeners

Bloomberg Law by Bloomberg

Bloomberg Law

356 Listeners

FedSoc Forums by The Federalist Society

FedSoc Forums

82 Listeners

The Glenn Show by Glenn Loury

The Glenn Show

2,252 Listeners

Faculty Division Bookshelf by The Federalist Society

Faculty Division Bookshelf

8 Listeners

Law Talk With Epstein, Yoo & Cooke by Ricochet

Law Talk With Epstein, Yoo & Cooke

676 Listeners

WSJ Opinion: Potomac Watch by Paul Gigot, The Wall Street Journal

WSJ Opinion: Potomac Watch

2,791 Listeners

U.S. Supreme Court Oral Arguments by Oyez

U.S. Supreme Court Oral Arguments

678 Listeners

The Editors by National Review

The Editors

4,788 Listeners

RTP's Fourth Branch Podcast by The Federalist Society

RTP's Fourth Branch Podcast

28 Listeners

Necessary & Proper Podcast by The Federalist Society

Necessary & Proper Podcast

47 Listeners

Uncommon Knowledge by Hoover Institution

Uncommon Knowledge

1,978 Listeners

Strict Scrutiny by Crooked Media

Strict Scrutiny

5,569 Listeners

Advisory Opinions by The Dispatch

Advisory Opinions

3,755 Listeners

The Ezra Klein Show by New York Times Opinion

The Ezra Klein Show

15,272 Listeners

Amarica's Constitution by Akhil Reed Amar

Amarica's Constitution

372 Listeners

Divided Argument by Will Baude, Dan Epps

Divided Argument

666 Listeners

Honestly with Bari Weiss by The Free Press

Honestly with Bari Weiss

8,558 Listeners