The McCarthy Series: U.S.P.T.O. v. Booking.com: What the Recent SCOTUS Ruling Means for Trademark Law

My notes are messed up because I had technical difficulties! But the McCarthy Institute will apparently publish video on its YouTube channel.

David Bernstein,
Debevoise & Plimpton: intro to case/overview.
 

Hal Poret: Used a Teflon
survey to educate consumers about difference between brand & common name,
including .com terms to show they could be either (staples.com = brand name;
officesupplies.com = generic term). Also used washingmachine.com to account for
bias towards considering .coms to be brand names.  Pattern of responses for booking.com and
wm.com: clear that booking.com & wm.com produced essentially opposite
results—heavily in favor of brand, and heavily in favor of common name
respectively. Booking.com’s results not just from bias in favor of considering
a .com to be a brand. Dissent/PTO misunderstands significance of control:
substantial noise doesn’t reflect a problem w/a survey but w/a real world bias
that the survey needed to grapple with.  Even if you remove the people who misclassified
wm.com, those who didn’t thought booking.com classified it as a brand by a 2:1
margin.
 

So this is perhaps
reflecting [de facto] secondary meaning and not lack of genericness. What are
possibilities for accounting for this? Could do additional education in the
survey training. Could include a .com in the mini-test respondents must pass. Could
make the entire survey about .com terms, so all the educational section and
examples would be about .com. Another possibility: change answer choices to
instead of asking about brand/common, could focus on distinguishing b/t
descriptiveness and genericness, which can be done. Could also look for
secondary meaning to look for respondents who are responding to previous
knowledge of the website versus those who weren’t previously familiar of the
term—to weed out influence of actual secondary meaning. Could also ask those
who were aware of the site questions to distinguish between whether they
thought it was descriptive or generic: is the primary meaning a description of
the products/services or is the primary meaning a type of product/service.
 

RT: Brief note: the
Poret report relied on the 74.8% total “brand name” response for booking.com as
the relevant number rather than treating the net 44.8% as the key when the 30%
who responded “brand name” for wm.com are taken into account as a control. This
matters if (but only if) one holds the opinion that a threshold over 50% in the
relevant consumer group is the correct threshold for showing that the primary
meaning of a term is as a trademark. But realistically, measuring brand
awareness is going to be hard in a Teflon survey, which is primarily directed
at a different question.
 

Given that the
majority explicitly says that it’s not reaching the survey criticisms because
of the PTO’s concessions, I think Mr. Poret’s suggestions for future surveys
are useful. A few specific comments: asking if people have heard of generic.com
suggests looking for secondary meaning; the interpretive question will be what
to make of people who say, as 1/3 seem to have done with wm.com, “I’ve never
heard of this particular generic.com but forced to choose between
generic/brand/not sure, I’ll go with brand.” If domain names are not
inherently distinctive by virtue of being domain names, it may be necessary to
offer a fourth option to make a Teflon survey work, something like “neither a
brand name nor a generic word.” Really interesting to see if people could be
trained on the Abercrombie spectrum!

Caveat: classifications
are legal matters and surveying on them may be a bad idea. Very few trademark
lawyers can predict the suggestive/distinctive line in a given dispute by
looking at prior cases. If we can’t get useful answers from five minutes of
training an ordinary consumer, we will have to look elsewhere. 

Another possibility:
use Likert scales where people give answers and then rate their degree of
certainty—using Likert scales can reveal a lot about where respondents are
basically guessing. Some empirical work by Sprigman et al on this forthcoming.

The larger problem
is the still uncertain issue of de facto secondary meaning: if the SCt opinion
means that there is no remaining doctrine of de facto secondary meaning, then
the survey as conducted in Booking is fine. If there is still such a doctrine,
then the survey shows that it may not be possible to ask consumers questions
they can reasonably be expected to answer. Respondents were (a) trained on the
brand/generic distinction, (b) classified screening examples correctly in order
to have their responses counted, and (c) uniformly got “supermarket” correct
and 398 out of 400 got “sporting goods” correct—if 30% of those people,
who clearly understood the task, still considered wm.com to be a brand name, when
everyone agrees that it lacks trademark function, then this type of survey may
simply not work for the relevant question. 

To put it another
way, post-decision, a Teflon survey will likely always produce the result “not
generic” for a generic.com. But “not generic” is not necessarily the same thing
as “a trademark,” and especially given the PTO’s increased and welcome
attention to trademark function, we may see much more attention to whether that
has been shown. Bold applicants may even argue that the Court majority at least
implicitly endorsed the district court’s reasoning that domain names are
usually inherently distinctive b/c everyone understands that they are exclusive—but
trademark function is a requirement even for matter that could in theory be
inherently distinctive, so we might see more attention to that point.
  

Bernstein: footnote
6 says other evidence might be better than surveys. Voice of the consumer
evidence.

Peter Golder, Prof. Marketing,
Dartmouth: Hearing the Voice of Consumer through Archival Evidence. Archival
evidence can avoid certain biases. Consumer perceptions can change over time:
Howard Johnson’s was once the most well known fast food chain, and quotes you
think are about McDonald’s were about it. Here: look at consumer perceptions
from tweets, referring to booking.com as one among several members of a class
like Travelocity.  Can also look at
prevalence of consumer serach. Can look at historical “name of class”—what did
competitor call itself? Example: Portable electronic camera was one early name;
took a while to converge on “digital camera.” Carefully designed studies can be
scientifically valid and persuasive in litigation. 

RT: Relevant, but
normative issues remain about interpreting things like usage versus
comprehension and whether de facto secondary meaning is a thing. Test suite: determine
what would this methodology have done for some of the key cases already
decided, “hog” for motorcycles, shredded wheat, etc. I don’t think that if
there’s a divergence b/t the results and the case law it’s fatal, because it
might be that the courts were wrong, but I do think it’s important to see what
kind of results you’d have gotten in such cases to see what the match is. More
overarchingly: still have the normative issue: is there such a thing as de
facto secondary meaning? If not—if de facto secondary meaning is de jure
secondary meaning—then this methodology is perfectly good in itself to answer
the relevant questions.
 

Q: competition issues?

Issues still to
come: if wm.com might be inherently distinctive, what about
washingmachines.com? Is that confusingly similar and how will we know? Consistent
with past Supreme Court decisions, questions about the scope of the mark have
all been deferred to the infringement inquiry: Freecycle example of how this
can allow overclaiming against people who are using only the generic portion. The
majority says that this risk attends any descriptive mark, but not all
descriptive terms are comprised of generic components: while one need not use “soft”
to sell one’s mattresses, one generally must use mattress to do so. Open
question: will courts use plausibility to put an early end to such cases? 

Related issue:
prosecution history estoppel, well known in patent but unknown in TM until
recently: Booking will likely increase both the PTO and the courts’ interest in
the concept. Two important examples pre-Booking: First, Bottega Veneta’s application
to register a specific width and angle of basket weave for shoes and bags,
which the PTO granted but with an explicit statement that the registered rights
did not extend past the width and angle of straps specifieds in the
registration; second, the Lettuce Turnip the Beet case in which a court said
that where the PTO found that a phrase failed to function as a mark when used
to decorate a T shirt but did function as a mark on a tag, the court would not
find liability for the defendant’s decorative use.
 

If other registrants
say something like what booking did—that it wasn’t going to assert its rights
against variations—courts and the PTO may see a competitive need to enforce
those concessions.
 

Golder: use of
generic.com hasn’t been key component of competitive advantage—market leaders don’t
have the generic term in their names in key industries.
 [As Christine Farley pointed out in comments, that was against a different background legal regime. Given the installed base, the real question is what happens in new industries or new forms of advertising. It’s not surprising that freecycle, a newly invented generic, is one place that problems have developed.]

Bernstein:
booking.com is looking to prevent confusing uses. Cars.com: a brick &
mortar dealer used a sign cars.com and was unaffiliated. Similarly w/UDRP
rights. But there will be recognized limits on the breadth b/c the TM is still
composed of highly descriptive if not generic components. Booking is a generic
term for booking things and .com is a generic tld. So the ability to prevent other
uses will depend on the totality of the facts: there’s a lot of mechanisms to
prevent against overenforcement: likely confusion; descriptive fair use.
 

Q: can this opinion
can be cabined as holding only that a generic.com domain name isn’t necessarily
generic?
 

RT: yes; the opinion
doesn’t preclude the idea that .coms are inherently distinctive because unique,
but nor does it embrace it. Depends on the cases that people bring whether the
doctrine develops in a way that protects users of generic terms from having to go through full
trials/at least develop a full summary judgment record for. Descriptive fair
use won’t be any help b/c using a term in the domain name will at least create
a fact issue on “use as a mark.”
 

Bernstein: if you
have a registration, UDRP panelists will usually defer to it and find confusing
similarity. If you don’t have a registration, you really need to show acquired
distinctiveness. UDRP doesn’t have access to discovery tools—would probably
have to be pretty overwhelming to persuade a panelist that the domain name is serving
as a mark. Booking.com was already registered in many countries around the
world; brings US into conformity; key takeaway goes beyond domain names, to
hashtags, addresses, combinations of marks, etc. Issue is not whether the term
is composed of terms that are generic but what is the perception of the term as
a whole.


Q: booking.com had so much secondary meaning—isn’t it difficult for a survey to
separate out that from what people think of the term in the abstract? Wouldn’t
the survey have had to be done years before to separate that out?
 

Poret: it’s a
recurring problem that often shows up. You can’t go back in time and measure it
back then. May be able to help people to distinguish between describing
characteristics and identifying a class.
 

Golder: archival
analysis can be a complement to these methods. Can estimate the life of a brand
even before it dies. Can find how terms were being used in archived materials.
Federal Circuit in Converse case raised issue of historical secondary meaning
being a challenge, but archive can serve as a time machine.

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