“The analysis of consumer perception of a composite mark’s root and suffix individually is not the same as analyzing the mark as a whole.” – amicus brief of Survey Scholars & Consultants

As argument nears in the Supreme Court battle between Booking.com and the United States Patent and Trademark Office (USPTO), 12 parties have now filed amicus briefs in support of Booking.com. Among the amici are the Intellectual Property Owners Association (IPO), the International Trademark Association (INTA), and the Survey Scholars and Consultants (SSC).

Intellectual Property Owners Association

IPO is urging the Supreme Court to find that generic terms added to generic top-level domains (TLDs) are not per se generic and are thus eligible for trademark protection under certain circumstances.

Generic terms are ineligible for trademark protection because this would potentially create a monopoly over a term that is already commonly used. However, descriptive terms, which describe the characteristics of a good or service, can be trademarked where secondary meaning has been acquired. More plainly put, descriptive terms are eligible for protection where the mark has become distinctive of the applicant’s good or product. IPO argues that even where domain names may contain generic component parts, they should still be eligible for protection. IPO believes that these terms should be analyzed to determine whether they have achieved inherent distinctiveness or secondary meaning from commercial use, and if so, they should be protected as trademarks. This approach, argues IPO, is consistent with analysis conducted by the USPTO and courts of appeals, and is not inconsistent with Supreme Court precedent.

The brief adds that permitting trademark protection for certain “generic.com” terms will not automatically result in overly broad marks because: 1) each generic component of the term still will be able to be freely utilized by others and 2) enforcement of the mark will still fall under the same “likelihood of confusion” standard as other marks.

The International Trademark Association

INTA’s brief begins by stating that it is seriously concerned with the USPTO’s arguments in support of blocking the mark’s registration and therefore opposes the proposed per se rule. Each trademark case is fact-based, argues INTA; therefore, decisions on whether to classify a term as generic should be made carefully because of the potential consequences of genericism for both brand owners and consumers. Because it is difficult to draw a line between generic and descriptive marks, imposing a per se rule would prevent consumer perception from being taken into consideration during mark evaluation. A per se rule, argues INTA, could negatively impact more than 1500 generic top-level domains (gTLDs) while unpredictably interacting with second level domains (SLDs) different from those domain names ending in “.com.”

Furthermore, INTA contends that all admissible evidence should be considered when determining whether a term is generic, and those cases that have excluded consumer perception “Teflon surveys” have failed to apply the Lanham Act’s primary-significance standard that applies to all marks, not just coined terms. This test requires the trier of fact to determine which meaning of a term is primary when it has both generic and brand meanings. Ignoring it, argues INTA, is ignoring the will of Congress, which intended survey evidence to be admissible in determining primary significance of marks challenged as generic. The Supreme Court has never held that consumer perception surveys cannot be considered to evaluate claims of genericness and has even held that evidence of consumer perception is relevant in distinguishing between generic and descriptive claims.

Lastly, INTA argues that domain names are more comparable to telephone numbers and geographic locations and that modern case law therefore provides a better legal framework than the pre-Lanham Act case Goodyear’s Rubber Mfg. Co. v. Goodyear Rubber Co, which discusses business designations. This is because domain names are registered to a single owner and represent a unique location. Multiple cases have classified geographic locations and telephone numbers as descriptive, rather than generic, and thus eligible for protection upon proof of acquired distinctiveness. INTA argues that domain names should be afforded the same protection.

Survey Scholars & Consultants

The Survey Scholars & Consultants (SSC) teach at colleges and universities throughout the United States and include consultants who analyze consumer perceptions specifically in the area of trademark law. The specific amici include Cornerstone Research, NERA Economic Consulting, Professor Dominique M. Hanssens of the University of California, Professor Barbara E. Kahn of the University of Pennsylvania, President George Mantis of Mantis Group, President Sara Parikh of Willow Research, Professor Dave Reibstein of the University of Pennsylvania, Professor Joel Steckel of New York University, and Professor Ronald T. Wilcox of the University of Virginia.

Their brief asks the Court to view domain names differently from all other trademarks by adopting a new rule just for them. SSC argues that the government is incorrect in determining that if a domain name’s root (SLD) and suffix (TLD) are each generic when viewed in isolation, the term itself if generic. The analysis of consumer perception of a composite mark’s root and suffix individually is not the same as analyzing the mark as a whole, contends SSC. Although the court should treat domain names like every other type of mark, SSC believes that consumer perception should be assessed on a case-by-case basis using survey evidence and market evidence of consumer usage and perception. SSC explains that Teflon surveys are the most accepted form of survey for testing genericness, because the participants are given a mini-course about the difference between generic and brand terms and are then given a mini-test to confirm their understanding. Furthermore, SSC argues that consumers did not begin using the term “booking.com” in Google searches until after Booking.com adopted the term, which is evidence that it was not pre-existing.

Additional amicus briefs have been filed by: Trademark and Internet Law Professors, Salesforce.com, Inc. and The Home Depot, Inc., The Association of Amicus Counsel, Professor Peter N. Golder and other Marketing Academics, the Internet Commerce Association, the New York Intellectual Property Law Association, Coalition of .Com Brand Owners, and the Boston Patent Law Association.

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