Amicus Curiae Brief — United States Patent and Trademark Office, et al., Petitioners v. Booking.com B.V.

No. 19-46

In the

Supreme Court of the United States

UNITED STATES PATENT AND

TRADEMARK OFFICE, et al.,

Petitioners,

v.

BOOKING.COM B.V.,

Respondent.

On Writ of Certiorari to the United States

Court of A ppeals for the Fourth Circuit

BRIEF FOR AMICI CURIAE BOSTON

PATENT LAW ASSOCIATION IN SUPPORT

OF RESPONDENT

Susan Okin Goldsmith

Erik Paul Belt

McCarter & English, LLP

Counsel of Record

Two Tower Center Boulevard, Lori Jane Shyavitz

24th Floor

A nne E. Shannon

East Brunswick, NJ 08816

A lexander L. Ried

McCarter & English, LLP

265 Franklin Street, 14th Floor

Boston, MA 02110

(617) 449-6500

ebelt@mccarter.com

Attorneys for Amicus Curiae

294453

A

(800) 274-3321 • (800) 359-6859

i

TABLE OF CONTENTS

Page

TABLE OF CONTENTS . . . . . . . . . . . . . . . . . . . . . . . . . . i

TABLE OF CITED AUTHORITIES . . . . . . . . . . . . . . iii

INTEREST OF THE AMICUS CURIAE . . . . . . . . . . . 1

INTRODUCTION AND SUMMARY

OF ARGUMENT . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2

ARGUMENT . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5

I.

THE FOCUS OF TRADEMARK LAW IS

CONSUMER PERCEPTION . . . . . . . . . . . . . . . 5

A. The Commercial Impression of a Mark

Depends on the Mark as a Whole . . . . . . . . . 7

1.

The Proposed Per Se Rule Violates

USPTO Procedures . . . . . . . . . . . . . . . . 8

2. Adopting the USPTO’s Proposed

Per Se Rule Will Lead to the

Absurd Conclusion that

T rademark Examiners Have

Mistakenly Registered Scores of

GENERIC.COM Marks . . . . . . . . . . . . 10

B. Consumer Surveys Are Often the Best

Evidence of Consumer Perception . . . . . . . 11

ii

Table of Contents

Page

C. Consumer Surveys Help Determine

Whether a Term is Generic or Not . . . . . . 13

II. STRONG TRADEMARK RIGHTS ARE

VITAL TO PREVENTING UNFAIR

COMPETITION ON THE INTERNET . . . . . 18

A. E volut ion of M a rket i ng : F r om

Paper to Cyberspace . . . . . . . . . . . . . . . . . . 19

B. Mnemonic Telephone Numbers Set

the Stage . . . . . . . . . . . . . . . . . . . . . . . . . . . . 20

C. Trademark Registrations Are Important

to Prevent Confusion and Thus Maintain

the Usability of the Internet . . . . . . . . . . . . 22

CONCLUSION . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 31

iii

TABLE OF CITED AUTHORITIES

Page

Federal Cases

In re 1800Mattress.com IP, LLC,

586 F.3d 1359 (Fed. Cir. 2009) . . . . . . . . . . . . . . . . . . . 9

In re Am. Fertility Soc.,

188 F.3d 1341 (Fed. Cir. 1999) . . . . . . . . . . . . . . . . . . . 7

Am. Thermos Prods. Co. v. Aladdin Indus., Inc.,

207 F. Supp. 9 (D. Conn. 1962), aff’d sub

nom., King-Seeley Thermos Co. v. Aladdin

Indus., Inc., 321 F.2d 577 (2d Cir. 1963) . . . . . . . . . . 15

Berner Int’l Corp. v. Mars Sales, Co.,

987 F.2d 975 (3d Cir. 1993) . . . . . . . . . . . . . . . . . . . . . 14

Booking.com B.V. v. Matal,

278 F. Supp. 3d 891 (E.D. Va. 2017) . . . . . . . . . . . 17, 20

Clicks Billiards, Inc. v. Sixshooters, Inc.,

251 F.3d 1252 (9th Cir. 2001) . . . . . . . . . . . . . . . . . . . 11

Dial-A-Mattress Franchise Corp. v. Page,

880 F.2d 675 (2d Cir. 1989) . . . . . . . . . . . . . . . . . . 20, 21

In re Dial-A-Mattress Operating Corp.,

240 F.3d 1341 (Fed. Cir. 2001) . . . . . . . . . . . . . . . . 8, 20

E.I. DuPont de Nemours & Co. v.

Yoshida Int’l, Inc.,

393 F. Supp. 502 (E.D.N.Y. 1975) . . . . . . . . . . . . . . . . 16

iv

Cited Authorities

Page

E.T. Browne Drug Co. v. Cococare Prods., Inc.,

538 F.3d 185 (3d Cir. 2008) . . . . . . . . . . . . . . . . . . 15, 16

Elliot v. Google, Inc.,

860 F.3d 1151 (9th Cir. 2017) . . . . . . . . . . . . . . . . . . . 15

Exxon Corp. v. Texas Motor Exch. of Houston, Inc.,

628 F.2d 500 (5th Cir. 1980) . . . . . . . . . . . . . . . . . . . . 11

Filipino Yellow Pages, Inc. v.

Asian Journal Publ’ns, Inc.,

198 F.3d 1143 (9th Cir. 1999) . . . . . . . . . . . . . . . . . . . 14

Genessee Brewing Co., Inc. v. Stroh Brewing Co.,

124 F.3d 137 (2d Cir. 1997) . . . . . . . . . . . . . . . . . . . . . 13

Gimix, Inc. v. JS&A Grp., Inc.,

No. 80 C 6592, 1982 WL 52164 (N.D. Ill. Jan.

13, 1982), aff’d sub nom. Gimix, Inc. v. JS &

A Grp., Inc., 699 F.2d 901 (7th Cir. 1983) . . . . . . . . . 14

Glover v. Ampak, Inc.,

74 F.3d 57 (4th Cir. 1996) . . . . . . . . . . . . . . . . . . . . . . 14

Hana Fin., Inc. v. Hana Bank,

735 F.3d 1158 (9th Cir. 2013), aff’d,

574 U.S. 418 (2015) . . . . . . . . . . . . . . . . . . . . . . . . . 11-12

Hana Fin., Inc. v. Hana Bank,

574 U.S. 418 (2015) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6

v

Cited Authorities

Page

Hershey Co. v. Promotion in Motion, Inc.,

No. 07-1601, 2011 WL 5508481

(D.N.J. Nov. 7, 2011) . . . . . . . . . . . . . . . . . . . . . . . . . . 16

Intel Corp. v. Advanced Micro Devices, Inc.,

756 F. Supp. 1292 (N.D. Cal. 1991) . . . . . . . . . . . . . . 16

Intermatic, Inc. v. Toeppen,

947 F. Supp. 1227 (N.D. Ill. 1996) . . . . . . . . . . . . . . . 23

Invisible Fence, Inc. v. Fido’s Fence, Inc.,

No. 3:09-CV-25, 2013 WL 6191634

(E.D. Tenn. Nov. 26, 2013) . . . . . . . . . . . . . . . . . . . . . 16

Inwood Labs., Inc. v. Ives Labs., Inc.,

456 U.S. 844 (1982) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6

Jet, Inc. v. Sewage Aeration Sys.,

165 F.3d 419 (6th Cir. 1999) . . . . . . . . . . . . . . . . . . . . . 8

Kellogg Co. v. Nat’l Biscuit Co.,

305 U.S. 111 (1938) . . . . . . . . . . . . . . . . . . . . . . . passim

Magic Wand, Inc. v. RDB, Inc.,

940 F.2d 638 (Fed. Cir. 1991) . . . . . . . . . . . . . . . . . . . 12

March Madness Athletic Ass’n, L.L.C. v. Netfire, Inc.,

310 F. Supp. 2d 786 (N.D. Tex. 2003), aff’d,

120 Fed. Appx. 540 (5th Cir. 2005) . . . . . . . . . . . . . . 16

vi

Cited Authorities

Page

Nat’l Fed’n of the Blind, Inc. v.

Loompanics Enters. Inc.,

936 F. Supp. 1232 (D. Md. 1996) . . . . . . . . . . . . . . 14-15

Estate of P.D. Beckwith, Inc., v.

Comm’r of Patents,

252 U.S. 538 (1920) . . . . . . . . . . . . . . . . . . . . . . . . . 7, 14

Park ‘N Fly, Inc. v. Dollar Park & Fly, Inc.,

469 U.S. 189 (1985) . . . . . . . . . . . . . . . . . . . . . . . . . 6, 13

Princeton Vanguard , LLC v.

Frito-Lay N. Am., Inc.,

786 F.3d 960 (Fed. Cir. 2015) . . . . . . . . . . . . . . . . . 7, 14

Qualitex Co. v. Jacobson Prods. Co.,

514 U.S. 159 (1995) . . . . . . . . . . . . . . . . . . . . . . . . . . 5, 6

Royal Crown Co. v. Coca-Cola Co.,

892 F.3d 1358 (Fed. Cir. 2018) . . . . . . . . . . . . . . . 13, 17

In re Steelbuilding.com,

415 F.3d 1293 (Fed. Cir. 2005) . . . . . . . . . . . . . . . 10, 13

Timelines, Inc. v. Facebook, Inc.,

938 F. Supp. 2d 781 (N.D. Ill. 2013) . . . . . . . . . . . . . . 16

Triple-I Corp. v.

Hudson Assocs. Consulting, Inc.,

713 F. Supp. 2d 1267 (D. Kan. 2010) . . . . . . . . . . . . . 15

vii

Cited Authorities

Page

Two Pesos, Inc. v. Taco Cabana, Inc.,

505 U.S. 763 (1992) . . . . . . . . . . . . . . . . . . . . . . . . . . 5, 6

ZP No. 314, LLC v. ILM Capital, LLC,

335 F. Supp. 3d 1242 (S.D. Ala. 2018) . . . . . . . . . . . . 12

Zurco, Inc. v. Sloan Valve Co.,

785 F. Supp. 2d 476 (W.D. Pa 2011) . . . . . . . . . . . . . . 15

State Cases

Jenzabar, Inc. v. Long Bow G roup, Inc.,

977 N.E.2d 75 (Mass. App. Ct. 2011), . . . . . . . . . . . 18

UDRP Materials

El e c t r o ni c Fr o n ti e r Fo u n d a ti o n v.

S h a w a n d a K i r l i n , D 2 0 1 5 -16 2 8 , 2 0 1 5

WL 7424214 (WIPO Nov. 10, 2015) . . . . . . . . . . . . . . 29

El e c t r o ni c Fr o n ti e r Fo u n d a ti o n v.

W h o i s G u a r d Pr o t e c t e d , W h o i s g u a r d

I n c . /Ja n H a s k o , D 2 0 17 - 1 3 5 5 , 2 0 17

WL 4235815 (WIPO Sept. 13, 2017) . . . . . . . 28, 29-30

NBA Pr o ps . In c ., v. Adir o n d a c k

Sof tware Cor p., D2 0 0 0 -1211, 2 0 0 0 W L

35643697 (WIPO Dec. 8, 2000) . . . . . . . . . . . . . . . . . 28

ICANN Rules, https://www.icann.org/resources/

pages/udrp-rules-2015-03-11-en . . . . . . . . . . . . . . . . 26

viii

Cited Authorities

Page

ICANN, Uniform Domain-Name Dispute-Resolution

Policy § 4(a), https://www.icann.org/resources/

pages/policy-2012-02-25-en . . . . . . . . . . . . . . . . . . . . 27

ICA NN, Un i for m Doma i n Na me Disput e

Resolution Policy, https://w w w.icann.org/

resources/pages/help/dndr/udrp-en . . . . . . . . . . . . . 26

Welcome to ICANN!, https://www.icann.org/

resources/pages/welcome-2012-02-25-en . . . . . . . . 25

WIPO Over view of WIPO Panel Views on

Selected UDRP Questions, Third Edition,

ht t p s: // w w w.w ip o. i nt /a mc /en /dom a i n s /

search/overview3.0/ . . . . . . . . . . . . . . . . . . . . . . . . . . .27

W I P O Supplement a l Ru le s for Un i for m

Domain Name Dispute Resolution Policy,

ht t p s: // w w w.w ip o. i nt /a mc /en /dom a i n s /

supplemental/eudrp/newrules.html . . . . . . . . . . . . . 26

WIPO, Schedule of Fees Under the UDRP,

https://www.wipo.int/amc/en/domains/fees/ . . . . . . . 26

WIPO, Statistics, Total Number of Cases Per Month

for Year 2019, https://www.wipo.int/amc/en/

domains/statistics/cases_yr.jsp?year=2019 . . . . . . . 26

Federal Statutes

15 U.S.C. § 1064(3) . . . . . . . . . . . . . . . . . . . . . . . . 13, 17, 19

ix

Cited Authorities

Page

15 U.S.C. § 1127 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5, 6, 9

Regulations

67 Fed. Reg. 18176 (Apr. 15, 2002) . . . . . . . . . . . . . . . . . . 8

Trademark Office Guidelines

Trademark Manual of Examining Procedure

at Foreword (Oct. 2018 ed.) . . . . . . . . . . . . . . . . . . . . . 9

Trademark Manual of Examining Procedure

§ 1209.03(l) (Oct. 2018 ed.) . . . . . . . . . . . . . . . . . . . . . 22

Trademark Manual of Examining Procedure

§ 1209.03(m) (Apr. 2005, 4th ed.) . . . . . . . . . . . . . . . . . 9

Trademark Manual of Examining Procedure

§ 1209.03(m) (Oct. 2018 ed.) . . . . . . . . . . . . . . . . . . . . . 9

Trademark Manual of Examining Procedure

§ 1215.05 (Apr. 2005, 4th ed.) . . . . . . . . . . . . . . . . . 9, 10

Trademark Manual of Examining Procedure

§ 1215.05 (Sept. 2007, 5th ed.) . . . . . . . . . . . . . . . . . . 10

Trademark Manual of Examining Procedure

§ 1215.05 (Oct. 2018 ed.) . . . . . . . . . . . . . . . . . . . . . . . 10

x

Cited Authorities

Page

United States Patent & Trademark Office,

Trademark Litigation Tactics and Federal

Government Services to Protect Trademarks

and Prevent Counterfeiting, https://www.

uspto.gov/sites/default/files/trademarks/

notices/TrademarkLitigationStudy.pdf . . . . . . . . . . 22

Other Authorities

Zohar Efroni, A Guidebook to Cybersquatting

L i t i g a t i o n : T h e P r a c t i c a l Ap p r o a c h

in a Post-Bar cel o n a .co m Wo rl d, 2 0 0 3

U. Ill. J.L. Tech. & Pol’y 457 (2003) . . . . . . . . . . . . . 26

Deborah R. Farringer, Send Us the Bitcoin

or Patients Will Die: Addressing the Risks

of Ransomware Atta cks on Hospitals,

40 Seattle U. L. Rev. 937 (2017) . . . . . . . . . . . . . . . . . 23

Gabr iel M. Gelb et al., Inter net Sur veys

Fo r T r a d e m a r k L i t i g a t i o n : R e a d y

or Not, Here They Come, 97 Trademark

Reporter 1073 (2007) . . . . . . . . . . . . . . . . . . . . . . . . . 13

Scott Graham, Longtime Guardian of Jack

Daniels Brand to Run Trademarks at

PTO, Law.com (Feb. 5, 2020), https://www.

law.com /nationallaw jour nal /2 02 0/02 /05/

longtime-guardian-of-jack-daniels-brandt o - r u n - t r a d e m a r k s - a t - p t o / ?s l r e t u r n

=20200114171312 . . . . . . . . . . . . . . . . . . . . . . . . . . 22-23

xi

Cited Authorities

Page

St ephen Hu rley, Th e Use of Sur veys in

Merger and Competition Analysis, 7 J.

Comp. L. & Econ. 45 (2010) . . . . . . . . . . . . . . . . . . . . 12

E. Deborah Jay, Gener icness Sur veys in

Trademark Disputes: Evolution of Species,

99 Trademark Reporter 1118 (2009) . . . . . . . . . . 15-16

K e it h D. K le i n & R . A nd r e w C he r e c k ,

Sur veys: Business Tools and Valuable,

But Of t en O verl ook ed , Ev i d en ce, T he

Franchise Lawyer, Vol. 16 No. 4, Fall 2013 . . . . . . . 12

Isaac Kohen, Five Cyber Risks that will Define

2020, Help Net Security (Jan. 6, 2020), https://

www.helpnetsecurity.com/2020/01/06/cyberrisks-2020 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 24

J. S cot t La r son , Enfo r c in g In t el l ec tu a l

Property Rights to Deter Phishing, 22 No. 1

Intell. Prop. & Tech. L.J. 1 (2010) . . . . . . . . . . . . . . . 23

Hadley L. Matarazzo, Lynn A. Toops, Data

Breaches Come in All Sizes, Trial, June 2019 . . 23-24

Anne M. McCarthy, The Post-Sale Confusion

Doctrine: Why the General Public Should Be

Included in the Likelihood of Confusion Inquiry,

67 Fordham L. Rev. 3337 (1999) . . . . . . . . . . . . . . . . . 5

xii

Cited Authorities

Page

2 J. Thomas McCarthy, McCarthy on Trademarks

a n d Un f a i r C o m p e t i t i o n § 11: 8 3 . 5 0

(5th ed. 2019) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6

Michael S. Mireles, Jr., Towards Recognizing

a n d R e c o n c i li n g t h e Mu l t i p li c i t y of

Values and Interests in Trademark Law,

44 Ind. L. Rev. 427 (2011) . . . . . . . . . . . . . . . . . . . . . . . 6

La r r y Ponemon, W hat’s New in the 2019

Cost of a Data Breach Report, Security

I nt e l l i g e nc e (Ju ly 2 3 , 2 019), ht t p s: //

securityintelligence.com/posts/whats-new-inthe-2019-cost-of-a-data-breach-report/ . . . . . . . . . . 24

Cooper Quintin, New Spear Phishing Campaign

Pretends to be EFF, Electronic Frontier

Foundation (Aug. 27, 2015), https://w w w.

e f f . o r g /d e e p l i n k s / 2 015 / 0 8 / n e w - s p e a r phishing-campaign-pretends-be-eff . . . . . . . . . . . . . 28

Wikipedia, https://en.wikipedia.org/wiki/.com . . . . . . . 25

Brian J. Winterfeldt, et al, The Impact of GDPR on

Online Brand Enforcement: Lessons Learned

and Best Practices for IP Practitioners,

A mer ic a n Ba r A s soc i at ion, La ndsl ide

Webinar Series, Vol. 11, No. 4 (2019). . . . . . . . . . . . . 25

Nick Wreden, Usin g Sur veys t o Get th e

Information Your Business Needs, 5 Harvard

Mgmt. Comm’n Letter No. 10, October 2002 . . . . . 12

1

INTEREST OF THE AMICUS CURIAE1

Founded in 1924, the Boston Patent Law Association

(“BPLA”) is one of the oldest intellectual property law

associations in the country. The BPLA sponsors educational

programs and forums for its nearly 1,000 members on

topics such as patents, trademarks, copyrights, and

licensing, among others. BPLA members—attorneys,

scholars, licensing executives, and other professionals—

serve a broad range of clients in numerous industries

that create and rely on intellectual property in both

the brick-and-mortar world and in the virtual world of

websites and social media. BPLA members are on the

front lines of trademark practice: they represent their

clients in trademark prosecution in the United States

Patent and Trademark Office (USPTO), in trademark

licensing and portfolio development, and in trademark

disputes in federal courts and other venues. The BPLA

has thus gained valuable insights on both trademark law

and practice and also on how trademarks work in the

business world.

1. The BPLA has no financial interest in any party or in the

outcome of this case. No counsel for a party authored this brief in

whole or in part, and no such counsel or party made a monetary

contribution intended to fund the preparation or submission

of this brief. No person other than amici curiae, its members,

or its counsel made a monetary contribution to its preparation

or submission. The parties have consented to the filing of this

brief. This brief is submitted solely on behalf of the BPLA as

its consensus view. The stated arguments and positions do not

necessarily reflect the views of any individual BPLA member,

associated firm, or client of a member. All work to prepare and

submit this brief were provided on a pro bono basis by McCarter

& English, LLP.

2

Over the years, the BPLA has prepared and filed a

number of amicus briefs in this Court and other courts.

For example, the BPLA recently submitted amicus briefs

to this Court in Acorda Therapeutics, Inc. v. Roxane

Labs., Inc. (2019) and Oil States Energy Servs., LLC v.

Greene’s Energy Group, LLC (2018). The BPLA submits

amicus briefs and otherwise works to educate the public

on intellectual property law because, over nearly 100 years

of existence, it has seen first-hand that strong intellectual

property rights benefit the American economy and society

generally. Indeed, in those periods in which—due to

inconsistent enforcement or political trends—intellectual

property rights were weakened, innovation and economic

growth stalled and even declined. Thus, the BPLA

has a substantial interest in seeing that intellectual

property law—in this case, trademark law—develops in

a clear, predictable, and consistent way so as to promote

commerce, fair competition, and the public good.

INTRODUCTION AND SUMMARY

OF ARGUMENT

Trademarks are perhaps the most commercial of

the intellectual property rights. Unlike patents and

copyrights, which encourage and protect innovation and

originality regardless of commercialization, trademark

rights vest only after the marks are first used in connection

with the sale of goods or services. Also unlike patents and

copyrights, trademark rights become stronger as the

trademarked goods or services become more successful

and thus more appreciated by consumers. As such, the

strength of a trademark, and indeed whether a term or

symbol even qualifies for trademark protection, depends

not just on the labors of the manufacturer or merchant

but also on how consumers perceive the trademark.

3

In keeping with the commercial nature of trademarks,

the main function of trademark law is to prevent consumer

confusion in the marketplace and thus to enable consumers

to associate a particular good or service with a single

source. Trademark law promotes fair competition while

preventing deception, counterfeiting, and other unfair

business practices. All along, trademark law focuses on

the consumer’s perception of the trademark. Consumer

perception is a significant focus of numerous inquiries

in trademark law, including, for example, likelihood of

confusion, secondary meaning, and genericness.

In practice before any tribunal, trademark lawyers

(such as members of the BPLA) rely on a range of evidence

to establish the consumer’s perception of a trademark,

including, for example, witness testimony, business

records, press clippings, advertisements, and consumer

surveys. Consumer surveys are increasingly the most

well-regarded form of evidence because they most directly

measure overall consumer sentiment.

That is what is wrong with the position of the USPTO

and its amicus supporters—it fails to give proper credit to

survey evidence showing that consumers overwhelmingly

perceive BOOKING.COM to be a brand rather than a

generic term. The USPTO, or any tribunal for that matter,

should not be permitted to decide an issue merely by

pointing to a dictionary definition while ignoring more

direct and more relevant evidence.

Moreover, the USPTO and its amicus supporters are

asking the wrong questions. The question is not whether

“Booking” is, by itself, a generic term. The question is

not whether “.com” is, by itself, a generic term. Nor is the

question whether adding “.com” to an otherwise generic

4

term makes the combined term a source indicator (i.e.,

a trademark). Rather, the question is, and should be,

whether consumers regard the combination as a whole

to be a source indicator.

Accordingly, the BPLA will discuss two points in

this brief. First, consumer perception is the sine qua

non of trademark law. Whether considering genericness,

secondary meaning, likelihood of confusion, or any other

trademark inquiry, consumer perception rightly focuses on

the mark as a whole, not on its constituent parts considered

separately. Consumer surveys, such as so-called Teflon

and Thermos surveys that ask whether or not a term is

generic, are important factors in the analysis and cannot

be ignored. Consumer surveys have a long history of use

in trademark cases and are often considered material and

highly persuasive evidence. In short, in deciding whether

a term like BOOKING.COM is generic or not, all available

evidence should be considered and, in the hierarchy of

evidence, consumer surveys and other direct evidence of

consumer perception should be given more weight than

dictionaries and other second-hand evidence.

Second, contrary to the apparent position of the

Electronic Frontier Foundation (EFF), strong trademark

rights, including in particular trademark registrations,

are vital to preventing consumer confusion and fraud on

the Internet. While the EFF points to the Domain Name

System (DNS) as somehow providing a means for online

businesses to distinguish themselves from infringers, that

is not how things actually work. There are many tricks

that unscrupulous bad actors can use to divert customers

from legitimate online businesses, such as through

cybersquatting, spoofing, phishing, and other means of

5

mimicking the domain names of others. In practice, a

domain name owner still needs superior trademark rights

to protect itself and to prevent harm to consumers.

ARGUMENT

I.

T H E F O C U S OF T R A DEM A R K L AW I S

CONSUMER PERCEPTION

As prefaced above, the main function of trademark

law is to prevent consumer confusion and thus to enable

consumers to associate a particular good or service with

a single source, even if that source is unknown or distant.

See 15 U.S.C. § 1127; see also Qualitex Co. v. Jacobson

Prods. Co., 514 U.S. 159, 163–64 (1995) (“[T]rademark law,

by preventing others from copying a source-identifying

mark, ‘reduce[s] the customer’s costs of shopping and

making purchasing decisions’ . . . for it quickly and easily

assures a potential customer that this item . . . is made

by the same producer as other similarly marked items

that he or she liked (or disliked) in the past.”) (internal

citation omitted); Two Pesos, Inc. v. Taco Cabana, Inc.,

505 U.S. 763, 783 (1992) (one purpose of trademark law

“is to protect the public so it may be confident that, in

purchasing a product bearing a particular trade-mark

which it favorably knows, it will get the product which it

asks for and wants to get”) (citation omitted); Kellogg Co.

v. Nat’l Biscuit Co., 305 U.S. 111, 121 (1938) (competitor’s

obligation “is not to insure that every purchaser will know

the maker but to use every reasonable means to prevent

confusion”); Anne M. McCarthy, The Post-Sale Confusion

Doctrine: Why the General Public Should Be Included

in the Likelihood of Confusion Inquiry, 67 Fordham L.

Rev. 3337, 3340 (1999) (main goal of trademark law is to

prevent consumer confusion).

6

Trademark law promotes fair competition while

preventing deception, counterfeiting, and other unfair

business practices. See, e.g., Two Pesos, 505 U.S. at 767–68

(“The Lanham Act was intended to make ‘actionable

the deceptive and misleading use of marks’ and ‘to

protect persons engaged in . . . commerce against unfair

competition’”) (citing 15 U.S.C. § 1127); Park ‘N Fly,

Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 198 (1985)

(“National protection of trademarks is desirable, Congress

concluded, because trademarks foster competition and the

maintenance of quality by securing to the producer the

benefits of good reputation”) (citation omitted).

Because trademark law seeks to prevent consumer

confusion, it is natural that the focus of trademark law

be on consumer perception. Kellogg, 305 U.S. at 121; 2 J.

Thomas McCarthy, McCarthy on Trademarks and Unfair

Competition § 11:83.50 (5th ed. 2019) (weighing evidence

of consumer perception is a key element in commercial

strength of a mark); Michael S. Mireles, Jr., Towards

Recognizing and Reconciling the Multiplicity of Values

and Interests in Trademark Law, 44 Ind. L. Rev. 427,

455 (2011) (“legal protection for trademark law is based

upon consumer perception”). How a mark is perceived

by the relevant consuming public helps determine issues

such as likelihood of confusion, secondary meaning,

tacking, and even genericness. See, e.g., Hana Fin., Inc.

v. Hana Bank, 574 U.S. 418, 421 (2015) (test for tacking

relies on the commercial impression that two marks make

on the ordinary consumer); Qualitex, 514 U.S. at 163

(“over time, customers may come to treat a particular

color on a product or its packaging . . . as signifying a

brand”); Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S.

844, 851 n.11 (1982) (“To establish secondary meaning, a

7

manufacturer must show that, in the minds of the public,

the primary significance of a product feature or term is to

identify the source of the product rather than the product

itself.”) (emphasis added); Kellogg, 305 U.S. at 119 (a mark

is not generic if “the primary significance of the term in

the minds of the consuming public is not the product but

the producer”) (emphasis added).

As argued below, the consumer’s perception of a mark

(also known as “commercial impression”) depends on the

mark as a whole, not on its constituent pieces considered

separately. Consumer surveys are often the best evidence

of commercial impression. That is no less the case when

deciding whether a term or symbol is generic.

A.

The Commercial Impression of a Mark Depends

on the Mark as a Whole

“The commercial impression of a trade-mark is

derived from its whole, not from its elements separated

and considered in detail. For this reason, it should be

considered in its entirety.” Estate of P.D. Beckwith, Inc.,

v. Comm’r of Patents, 252 U.S. 538, 545–46 (1920). For

composite marks like BOOKING.COM, the so-called

“anti-dissection rule” is indispensable because “the whole

[of a composite mark] may be greater than the sum of

its parts.” In re Am. Fertility Soc., 188 F.3d 1341, 1348

(Fed. Cir. 1999); Princeton Vanguard, LLC v. Frito-Lay

N. Am., Inc., 786 F.3d 960, 968 (Fed. Cir. 2015) (“Even if

each of the constituent words in a combination mark is

generic, the combination is not generic unless the entire

formulation does not add any meaning to the otherwise

generic mark”). Even the EFF concedes that an applicant

may try to prove that a “combination is greater than the

8

sum of its parts and primarily signifies the source of its

goods or services to consumers.” EFF.Br. at 18.

Determining the commercial impression of a mark

is important at every stage of a trademark’s life cycle.

Thus, the anti-dissection rule applies not only to evaluate

whether a mark is protectable, such as in a genericness or

a descriptiveness inquiry, but also as part of the confusion

analysis. See, e.g., In re Dial-A-Mattress Operating Corp.,

240 F.3d 1341, 1345–46 (Fed. Cir. 2001) (requiring the

USPTO to weigh the entire commercial impression of a

mark when assessing whether to register a mark); Jet,

Inc. v. Sewage Aeration Sys., 165 F.3d 419, 423 (6th Cir.

1999) (endorsing the anti-dissection rule, “which serves

to remind courts not to focus only on the prominent

features of the mark, or only on those features that are

prominent for purposes of the litigation, but on the mark

in its totality”). The USPTO itself has long applied the

anti-dissection rule when examining trademarks. Thus,

the USPTO’s sudden and unexplained departure from

its long-time rule will upset expectations of trademark

creators and practitioners.

1.

The Proposed Per Se Rule Violates USPTO

Procedures

The USPTO’s “Trademark Manual of Examining

Procedure (TMEP) is a reference work that sets forth the

practices and procedures that are followed in connection

with the prosecution of applications to register marks at

the [USPTO].” 67 Fed. Reg. 18176 (Apr. 15, 2002). “[TMEP]

contains guidelines for Examining Attorneys and

materials in the nature of information and interpretation,

and outlines the procedures which Examining Attorneys

9

are required or authorized to follow in the examination of

trademark applications.” TMEP at Foreword (Oct. 2018

ed.). Examining attorneys, brand owners, and trademark

practitioners rely on TMEP for guidance in determining

whether a proposed “word, name, symbol, or device, or

any combination thereof” constitutes a trademark. 15

U.S.C. § 1127.

Since at least as early as the Fourth Edition of the

TMEP published in April 2005—and thus for at least the

last 15 years, well before Booking.com sought to register

its marks—the USPTO has acknowledged the importance

of evaluating the overall commercial impression of a

domain name to determine whether it is protectable as

a trademark. See TMEP §§ 1209.03(m), 1215.05 (4th ed.

Apr. 2005) (“When examining domain name marks, it

is important to evaluate the commercial impression as

a whole, including the TLD indicator.”). In undertaking

this evaluation, the USPTO requires examining attorneys

to consider both whether “the gTLD may be capable

of source-indicating significance, and whether the

composite mark conveys any distinctive source-identifying

impression apart from its individual components.” TMEP

§ 1209.03(m) (Oct. 2018 ed.).

While TMEP instructs examining attorneys to

evaluate evidence for the individual elements of a proposed

domain name mark, it also compels them to consider the

significance of the proposed mark as a whole “to determine

whether the addition of a gTLD has resulted in a mark

that conveys a source-identifying impression.” Id. at

§ 1209.03(m); see also In re 1800Mattress.com IP, LLC,

586 F.3d 1359, 1363–64 (Fed. Cir. 2009) (the USPTO first

considered each component of MATTRESS.COM, namely,

10

the words “mattress” and “.com,” and determined that

they were both generic and then considered the mark as

a whole and determined that the combination added no

new meaning).

Under the USPTO’s proposed per se rule, however, only

the separate components of a GENERIC.COM mark—

namely, the generic top level domain (e.g., .COM) and the

generic second level domain (here, “GENERIC”)—would

need to be assessed. If both components of the composite

mark are found to be generic, the inquiry ends, and the

composite mark is ruled to be generic without considering

the mark as a whole. This per se rule violates the antidissection rule, the USPTO’s long-standing practice,

and the expectations of brand owners and trademark

practitioners.

2.

A d o p t i n g t h e U S P T O ’s P r o p o s e d

Per Se Rule Will Lead to the Absurd

Conclusion that Trademark Examiners

Have Mistakenly Registered Scores of

GENERIC.COM Marks

TMEP has informed examining attorneys, brand

owners, and practitioners for at least the last 15 years

that “there is no per se rule that the addition of a nonsource-identifying gTLD to an otherwise generic term

can never under any circumstances operate to create a

registrable mark.” TMEP § 1215.05 (Oct. 2018 ed.) (citing

In re Steelbuilding.com, 415 F.3d 1293, 1299 (Fed. Cir.

2005)) (internal citations omitted); see also, e.g., TMEP §

1215.05 (Sept. 2007, 5th ed.) (same); TMEP § 1215.05 (Apr.

2005, 4th ed.) (stating there is no per se rule that “[t]he

addition of a TLD . . . to an otherwise unregistrable mark

11

does not add any source-identifying significance”). Indeed,

the USPTO has registered numerous GENERIC.COM

marks over the years (see Res.App. at 1a–11a) and has even

recently approved an application for SYNTHESIZERS.

COM (Serial No. 88344065) covering “Musical instrument

digital interface (MIDI) master computer keyboards”

(i.e., synthesizers).

The USPTO’s proposed per se rule is a reversal of

longstanding USPTO procedure. With the adoption of

a per se rule, the USPTO would also have the Court

ignore the long-established case law and rules that guide

the USPTO’s trademark examining attorneys in their

examination of potential trademarks. Because case law

and long-standing USPTO procedures directly conflict

with the proposed per se rule, this Court should reject it.

B. Consumer Surveys Are Often the Best Evidence

of Consumer Perception

Consumer surveys have long been used in trademark

matters to establish consumer perception of trademarks.

These surveys have been used to aid the likelihood of

confusion, secondary meaning, and tacking analyses,

among others. Exxon Corp. v. Texas Motor Exch. of

Houston, Inc., 628 F.2d 500, 506 (5th Cir. 1980) (giving

“substantial weight” to plaintiff’s survey in determining

likelihood of confusion); Clicks Billiards, Inc. v.

Sixshooters, Inc., 251 F.3d 1252, 1262 (9th Cir. 2001)

(considering survey evidence in secondary meaning

analysis); Hana Fin., Inc. v. Hana Bank, 735 F.3d 1158,

1164 (9th Cir. 2013) (noting that “commercial impression”

is integral to tacking analysis and “should be resolved by

considering . . . consumer survey evidence”), aff’d, 574 U.S.

12

418 (2015). Consumer surveys have become so important

that courts have rejected the position of litigants for failing

to submit survey evidence. See, e.g., Magic Wand, Inc. v.

RDB, Inc., 940 F.2d 638, 641 (Fed. Cir. 1991) (holding that

mark’s challenger failed to meet its burden of proving

that term was generic because challenger “supplied no

survey evidence of consumer understanding”); ZP No.

314, LLC v. ILM Capital, LLC, 335 F. Supp. 3d 1242,

1259 (S.D. Ala. 2018) (marks lacked secondary meaning

because the plaintiff “presented no survey evidence” to

show consumers’ perception).

Consumer surveys are widely used to learn more

about consumer perceptions not just in the legal context

but in the broader business world. See generally Nick

Wreden, Using Surveys to Get the Information Your

Business Needs, 5 Harvard Mgmt. Comm’n Letter No.

10, October 2002, https://hbswk.hbs.edu/archive/usingsurveys-to-get-the-information-your-business-needssurvey-says-identify-your-objectives; Keith D. Klein & R.

Andrew Chereck, Surveys: Business Tools and Valuable,

But Often Overlooked, Evidence, The Franchise Lawyer

Vol. 16 No. 4, Fall 2013. Surveys allow businesses to

learn and understand more about consumers than other

data does. Indeed, surveys allow the inquirer to gain

invaluable insight that cannot otherwise be uncovered

from other evidence. Stephen Hurley, The Use of Surveys

in Merger and Competition Analysis, 7 J. Comp. L. &

Econ. 45, 46 (2010) (“The importance of surveys is due

to the fact that, in the absence of sufficient recent data

from the parties, surveys can be commissioned to get a

better understanding about how the market . . . works”).

As discussed in the next section, the importance of survey

13

evidence is no less true when it comes to the genericness

inquiry. 2

C.

Consumer Surveys Help Determine Whether a

Term is Generic or Not

“A generic term is one that refers to the genus of which

the particular product is a species.” Park ‘N Fly, 469 U.S.

at 195. Courts use the primary significance test, codified in

the Lanham Act, to determine whether a term is generic.

15 U.S.C. § 1064(3); Genessee Brewing Co., Inc. v. Stroh

Brewing Co., 124 F.3d 137, 144 (2d Cir. 1997) (stating

“[t]he primary significance test is the law of the land”).

A term is not generic when “the primary significance

of the term in the minds of the consuming public is not

the product but the producer.” Kellogg Co., 305 U.S. at

118. “The critical issue in genericness cases is whether

members of the relevant public primarily . . . understand

the term sought to be protected to refer to the genus of

goods or services in question.” Royal Crown Co. v. CocaCola Co., 892 F.3d 1358, 1367 (Fed. Cir. 2018) (citations

omitted). “An inquiry into the public’s understanding of a

2. Once very expensive, surveys are becoming cheaper,

faster, and more accurate. In the pre-Internet days, survey

experts would conduct “mall intercept” surveys by standing

in a shopping mall or other public place and asking shoppers

to fill out a survey on paper. That method was laborious. Now,

surveys are typically conducted over the Internet and can reach

a larger or more targeted audience, saving time and money in the

process. Gabriel M. Gelb et al., Internet Surveys For Trademark

Litigation: Ready or Not, Here They Come, 97 Trademark

Reporter 1073, 1082 (2007) (Internet surveys are “faster and

cheaper than [] traditional mall or telephone counterparts. Since

results are digitalized . . . it is not unusual for survey results to

be known two or three days” after survey launches).

14

mark requires consideration of the mark as a whole. Even

if each of the constituent words in a combination mark is

generic, the combination is not generic unless the entire

formulation does not add any meaning to the otherwise

generic mark,” Steelbuilding.com, 415 F.3d at 1297; see

also Beckwith, 252 U.S. at 545–46.

Both direct and indirect evidence can be used

to determine the primary significance of a term to

consumers. See Glover v. Ampak, Inc., 74 F.3d 57, 59

(4th Cir. 1996) (listing “purchaser testimony, consumer

surveys, listings and dictionaries[,] . . . newspapers,

and other publications” as evidence to show primary

significance”) (citations omitted). But direct evidence of

consumers’ understanding of a term, such as consumer

surveys, are a “preferred method of proving genericness.”

Princeton Vanguard, 786 F.3d at 969; see also Berner

Int’l Corp. v. Mars Sales, Co., 987 F.2d 975, 982–83 (3d

Cir. 1993) (“Consumer surveys have become almost de

rigueur in litigation over genericness. Judges are now used

to survey evidence and often expect to receive evidentiary

assistance by surveys in resolving generic disputes”)

(citations omitted); cf. Filipino Yellow Pages, Inc. v. Asian

Journal Publ’ns, Inc., 198 F.3d 1143, 1148 (9th Cir. 1999)

(explaining that dictionary definitions—which are indirect

evidence—may be considered but are “not determinative”

of “how a term is understood by the consuming public”).

Consumer surveys have become so important in

genericness cases that courts have criticized parties that

fail to present consumer survey evidence. See, e.g. Gimix,

Inc. v. JS&A Grp., Inc., No. 80 C 6592, 1982 WL 52164,

at *1 (N.D. Ill. Jan. 13, 1982) (“Neither side in this case

has produced any consumer surveys . . . Both sides are at

fault for such laxness.”), aff’d sub nom. Gimix, Inc. v. JS

& A Grp., Inc., 699 F.2d 901 (7th Cir. 1983); Nat’l Fed’n of

15

the Blind, Inc. v. Loompanics Enters. Inc., 936 F. Supp.

1232, 1247–48 (D. Md. 1996) (holding that challenger

failed to prove that mark was generic where challenger

only “cite[d] dictionary definitions” and produced “no

surveys”); Triple-I Corp. v. Hudson Assocs. Consulting,

Inc., 713 F. Supp. 2d 1267, 1285 (D. Kan. 2010) (finding a

mark generic where “[t]he Court has not been provided

with any survey evidence . . . that consumers . . . associate

this mark with a particular source”); Zurco, Inc. v. Sloan

Valve Co., 785 F. Supp. 2d 476, 489 (W.D. Pa 2011) (refusing

to grant summary judgment on issue of genericness

and criticizing moving party for its “fail[ure] to provide

any direct consumer evidence, whether by testimony or

survey”).

The preferred models of genericness surveys are

known as the “Teflon survey” and the “Thermos survey.”3

The Teflon format, which Booking.com submitted to the

District Court, has become the more used and accepted

method for analyzing a genericness question. 4 See E.

Deborah Jay, Genericness Surveys in Trademark

Disputes: Evolution of Species, 99 Trademark Reporter

3. A Thermos survey “puts the respondent in an imaginary

situation . . . and asks how the respondent would ask for the type

of good for which the trademark is alleged to be generic.” Elliot v.

Google, Inc., 860 F.3d 1151, 1160 (9th Cir. 2017) (internal citation

omitted).

4. Courts have admitted and considered Thermos surveys

since at least 1962. See Am. Thermos Prods. Co. v. Aladdin Indus.,

Inc., 207 F. Supp. 9, 21 (D. Conn. 1962) (considering “Thermos”

survey evidence to determine whether term “Thermos” had

become generic), aff’d sub nom., King-Seeley Thermos Co. v.

Aladdin Indus., Inc., 321 F.2d 577 (2d Cir. 1963); E.T. Browne

Drug Co. v. Cococare Prods., Inc., 538 F.3d 185, 197 (3d Cir. 2008)

(considering Thermos survey and noting survey created a question

of fact as to genericness).

16

1118, 1131 (2009) (“Teflon surveys have been the preferred

format for genericness surveys, as reflected by U.S. court

opinions and U.S. Trademark Trial and Appeal Board

decisions in which they have been approved.”); see also

Hershey Co. v. Promotion in Motion, Inc., No. 07-1601,

2011 WL 5508481, at *4 (D.N.J. Nov. 7, 2011) (finding that

“the Teflon surveys in this matter were validly conducted”

and “provided strong probative evidence of consumer

perception”); March Madness Athletic Ass’n, L.L.C. v.

Netfire, Inc., 310 F. Supp. 2d 786, 809 (N.D. Tex. 2003)

(considering Teflon survey to determine genericness), aff’d,

120 Fed. Appx. 540 (5th Cir. 2005); Invisible Fence, Inc. v.

Fido’s Fence, Inc., No. 3:09-CV-25, 2013 WL 6191634, at

*3 (E.D. Tenn. Nov. 26, 2013) (denying motion to exclude

Teflon survey); Timelines, Inc. v. Facebook, Inc., 938 F.

Supp. 2d 781, 791–92 (N.D. Ill. 2013) (considering Teflon

survey that showed 69% of consumers viewed term as

generic); Intel Corp. v. Advanced Micro Devices, Inc., 756

F. Supp. 1292, 1297 (N.D. Cal. 1991) (noting that Teflon

survey was “an important piece of evidence” the court

used in finding term was generic).

A Teflon survey focuses on whether a name is a

common name (i.e., generic) or a brand name (i.e., a

trademark). A Teflon survey first educates participants on

the distinction between a brand name and a common name.

Then it shows participants numerous terms—including

the term at issue—and asks “whether they are common

names or brand names.” E.T. Browne, 538 F.3d at 195

(describing a Teflon survey as “essentially a mini-course

in the generic versus trademark distinction, followed by

a test.”) (internal citation omitted); see generally E.I.

DuPont de Nemours & Co. v. Yoshida Int’l, Inc., 393 F.

Supp. 502 (E.D.N.Y. 1975). Consumers’ responses are used

17

to prove that “the primary significance of the term in the

minds of the consuming public is not the product but the

producer.” Kellogg, 305 U.S. at 118. Booking.com’s Teflon

survey is the only direct evidence of consumer perception

of the BOOKING.COM mark that either side submitted

in this case.

A consumer survey is thus a critical piece of evidence

in deciphering the primary significance of a proposed

trademark in the minds of the consuming public. If the

Court were to adopt the USPTO’s proposed per se rule,

then consumer survey evidence, and all other direct

evidence of consumers’ perception of a proposed mark

for that matter, will be eliminated from the genericness

inquiry.

The USPTO now argues that Booking.com’s Teflon

survey should not be considered in determining whether

BOOKING.COM is generic. Pet.Br. at 36. The USPTO

relies on its assertion that the relevant consuming public

would perceive BOOKING.COM to be generic based only

on indirect evidence, while arguing that the only direct

evidence of consumers’ perception of BOOKING.COM

(i.e., the survey) can safely be ignored. Booking.com

B.V. v. Matal, 278 F. Supp. 3d 891, 896 (E.D. Va. 2017).

The USPTO thus improperly replaces the consumers’

perspective with its own perspective, even though the

question of whether a mark is generic depends entirely

on consumer perception. 15 U.S.C. § 1064(3) (genericness

depends on “[t]he primary significance . . . to the relevant

public”); Royal Crown Co., 892 F.3d at 1367. The USPTO’s

attempt to circumvent the primary significance test

by introducing a per se rule that effectively removes

consumer perception from the genericness evaluation

should not be tolerated by this Court.

18

II. STRONG TRADEMARK RIGHTS ARE VITAL TO

PREVENTING UNFAIR COMPETITION ON THE

INTERNET

Strong trademark rights are needed to prevent

consumer confusion on the Internet and thus to keep the

Internet safe for commerce. The BPLA made this same

point about ten years ago in an amicus brief submitted

to the Massachusetts Appeals Court:

The BPLA views this case as one about

maintaining the usability of the Internet. The

law does not, and should not, allow a third

party to use the goodwill earned by another to

divert consumers, either directly or indirectly,

to its website. . . . The Superior Court’s ruling,

however, threatens orderly use of the Internet

by allowing or encouraging parties to hijack

trademarks to trick Internet users into visiting

their sites. . . .

If parties are allowed to litter search results

with links and advertisements that purport

to be affiliated with a well-known brand in a

confusingly similar fashion, the usability of the

Internet would be significantly impaired and

the value of the intellectual property associated

with that goodwill would be significantly

reduced.

Amicus Curiae Brief of Boston Patent Law Ass’n, at 2–4,

in Jenzabar, Inc. v. Long Bow Group, Inc., 977 N.E.2d

75 (Mass. App. Ct. 2011), available at https://www.bpla.

org/page/7.

19

As argued below, the world has changed since

the Goodyear case of 1888. Today, this Court and the

USPTO apply the “primary significance” test to analyze

genericness. A better analogy would be to the cases in

which mnemonic phone numbers were not treated as

generic. Finally, contrary to the EFF’s position, the

Domain Name System by itself does little to prevent

confusion and unfair competition on the Internet.

Trademark rights, particularly trademark registrations,

are crucial to proper Internet policing via popular disputeresolution procedures like the UDRP. Even the EFF

has relied on its trademark to prevent confusion on the

Internet.

A.

Evolution of Marketing: From Paper to

Cyberspace

The Goodyear case was litigated in the 1880s, and

its application to today’s online shopping experience is

tenuous at best. Blind application of Goodyear ignores the

more modern “primary significance” test for trademarks,

articulated 50 years later in Kellogg Co. v. National

Biscuit Co., 305 U.S. 111, 118 (1938), and codified in the

Lanham Act at 15 U.S.C. § 1064(3). Applying the holding

of that antiquated case on a per se basis ignores the reality

that consumers have become used to identifying the

source of goods or services through their website domain

names. Consumer marketing and advertising have evolved

since 1880 from pamphlets, print advertisements, and

mail order catalogs, to radio and television, and now to

online advertising. In the decades before the commercial

Internet, specific sources of goods and services were

identified through the use of vanity phone numbers

consisting of generic terms. The GENERIC.COM domain

names are simply the next evolutionary phase. There are

20

many good reasons to permit the extension of trademark

rights to those GENERIC.COM domain names that meet

the same standards as the vanity phone numbers, and, as

discussed below, there is an existing expedited process to

protect consumers from bad actors.

B. Mnemonic Telephone Numbers Set the Stage

As the District Court noted, “it is helpful to consider

the Federal Circuit’s reasoning in a case involving

telephone numbers as marks.” Booking.com B.V. v. Matal,

278 F. Supp. 3d 891, 909 (E.D. Va. 2017) (citing In re

Dial-A-Mattress Operating Corp., 240 F.3d 1341 (Fed.

Cir. 2001)). Mnemonic telephone numbers use letters

corresponding to the numbers on a telephone dial to allow

a caller to reach a specific entity. These vanity numbers

are analogous to domain names in that the area code prefix

is analogous to the gTLD suffix used in a domain name

(e.g., .com, .net, .org). The many examples of such phone

numbers include 1-800-FLOWERS, which was registered

as a trademark in 1975. See Res.App. at 13a–16a.

The 2001 Federal Circuit case is discussed at some

length by the parties and other amici. Less noted is that

it was preceded by Dial-A-Mattress Franchise Corp. v.

Page, 880 F.2d 675 (2d Cir. 1989). At the time, Dial-AMattress could be reached by consumers calling numbers

corresponding to various local area codes + MATTRES

(628-8737), all advertised with the slogan “DIAL-AMATTRESS and drop the last ‘S’ for savings.” Id at

676. When the defendant obtained the 800 number and

advertised 800-MATTRESS, customers were diverted.

The Second Circuit articulated the basic principle about

trademark rights in purportedly “generic” vanity phone

21

numbers. To the Second Circuit, avoiding customer

confusion was key:

Dial-A-Mattress is not seeking protection

against a competitor’s use of the word ‘mattress’

solely to identify the competitor’s name or

product. What the plaintiff seeks is protection

against a competitor’s use of a confusingly

similar telephone number and a confusingly

similar means of identifying that number . . .

Plaintiff does not lose the right to protection

against defendant’s use of a confusingly

similar number and a confusingly similar set

of letters that correlate with that number on

the telephone dial just because the letters

spell a generic term. The principles limiting

protection for the use of generic terms serve to

prevent a marketer from appropriating for its

exclusive use words that must remain available

to competitors to inform their customers as

to the nature of the competitor’s business

or product. These principles do not require

that a competitor remain free to confuse the

public with a telephone number or the letters

identifying that number that are deceptively

similar to those of a first user.

Id. at 678.

Any argument that domain names should not be

registerable because they are functional is belied by the

decades-long history of USPTO registrations of telephone

numbers and the cases on enforcement of those rights

22

by courts. See Res.App. at 13a–16a. Vanity telephone

numbers act just like modern domain names in pointing

a consumer to a specific source of goods or services. Yet,

“to support a refusal of registration on the ground that

a telephone number is generic, . . . it is not enough to

show that the telephone number consists of a non-sourceindicating area code and a generic term. The examining

attorney must show evidence of the meaning the relevant

purchasing public accords the proposed alphanumeric

mark as a whole.” TMEP § 1209.03(l) (Oct. 2018 ed.). In

2020, the only real difference between these types of

marks is which of the many features of a smartphone the

consumer uses to reach the source of the goods or services.

C.

Trademark Registrations Are Important to

Prevent Confusion and Thus Maintain the

Usability of the Internet

The USPTO and several amici, including the EFF and

Trademark Scholars, raise the possibility that trademark

owners may overreach by sending meritless cease-anddesist letters. But as the USPTO itself recognized, sending

such letters before filing suit reduces the burden on the

judicial system and encourages settlement of valid claims.

See USPTO, Trademark Litigation Tactics and Federal

Government Services to Protect Trademarks and Prevent

Counterfeiting, https://www.uspto.gov/sites/default/

files/trademarks/notices/TrademarkLitigationStudy.

pdf (visited Feb. 17, 2020). Many such letters are polite,

professional, and meritorious. Indeed, one authored

in 2012 by in-house counsel for the JACK DANIEL’S

brand (now the newly appointed Commissioner of

Trademarks) went viral for its restraint. Scott Graham,

Longtime Guardian of Jack Daniels Brand to Run

23

Trademarks at PTO, Law.com (Feb. 5, 2020), https://

www.law.com/nationallawjournal/2020/02/05/longtimeguardian-of-jack-daniels-brand-to-run-trademarks-atpto/?slreturn=20200114171312 (visited Feb. 17, 2020).

These letters are sent under many different circumstances

and are not limited by whether or not the mark is

GENERIC.COM. To the extent this is a problem (it is

not), it cannot be solved by eviscerating an entire class

of marks.

Neither the parties nor other amici have adequately

addressed very real problems in cyberspace: phishing, 5

cybersquatting,6 dissemination of ransomware,7 and other

bad acts that fool computer users by mimicking wellknown trademarks. These acts can result in serious data

breaches. In 2017, there were over 53,000 incidents and

2,216 confirmed data breaches worldwide. See Hadley L.

5. “Phishing is a form of social engineering by which

an attacker (the phisher) attempts to fraudulently retrieve

confidential information or sensitive credentials from legitimate

users (consumers) by mimicking electronic communications from

a trustworthy source (spoofing) in an automated fashion.” J. Scott

Larson, Enforcing Intellectual Property Rights to Deter Phishing,

22 No. 1 Intell. Prop. & Tech. L.J. 1, 1 (2010).

6. Cybersquatting is when an “[i]ndividual[] attempt[s]

to profit from the Internet by reserving and later reselling or

licensing domain names back to the companies that spent millions

of dollars developing the goodwill of the trademark.” Intermatic,

Inc. v. Toeppen, 947 F. Supp. 1227, 1233 (N.D. Ill. 1996).

7. Ransomware is a type of “malware that locks your

keyboard or computer to prevent you from accessing your data until

you pay a ransom.” Deborah R. Farringer, Send Us the Bitcoin or

Patients Will Die: Addressing the Risks of Ransomware Attacks

on Hospitals, 40 Seattle U. L. Rev. 937, 953 (2017).

24

Matarazzo, Lynn A. Toops, Data Breaches Come in All

Sizes, Trial, June 2019, at 36, 38 (citing Verizon, 2018 Data

Breach Investigations Report at 4 (11th ed., Apr. 2018),

https://enterprise.verizon.com/resources/reports/2018/

DBIR_2018_Report.pdf).

Even more alarming, in 2019 the average cost of a

data breach was $3.92 million. Larry Ponemon, What’s

New in the 2019 Cost of a Data Breach Report, Security

Intelligence (July 23, 2019), https://securityintelligence.

com/posts/whats-new-in-the-2019-cost-of-a-data-breachreport/ (visited Feb. 17, 2020). It is expected that “the

number of data breaches will reach an all-time high [in

2020]. The number of data breaches increased by 54% in

the first half of 2019, with nearly 4,000 publicly disclosed

breaches during that time. In total, more than 4.1 billion

records have been exposed [in 2019].” Isaac Kohen, Five

Cyber Risks that will Define 2020, Help Net Security (Jan.

6, 2020), https://www.helpnetsecurity.com/2020/01/06/

cyber-risks-2020/ (visited Feb. 17, 2020).

Due to rapid globalization and technolog ical

advancements, the reach of bad actors is expanding,

making businesses and the consumer data they hold

vulnerable. Trademark rights are an important weapon

in the fight against fraudsters and others who would lure

the unsuspecting person into downloading malware or

releasing information that can be used against consumers.

In cyberspace, the rights of trademark owners are

complicated by geography and by the European Union’s

General Data Protection Regulation (EU) 2016/679

(“GDPR”). Geography is complex in that many domain

names, including those gTLDs which end with .com, can

25

be registered by anyone, anywhere on the planet, and the

registrars themselves may be outside the United States.

Wikipedia, https://en.wikipedia.org/wiki/.com (visited Feb.

13, 2020). Until the GDPR went into effect on May 25, 2018,

domain name registrars were often able to make public the

names and addresses of registrants. Now, however, this

data is deemed to be personal information under GDPR,

and is usually unavailable regardless of the location of

the registrant. Brian J. Winterfeldt, et al, The Impact of

GDPR on Online Brand Enforcement: Lessons Learned

and Best Practices for IP Practitioners, American Bar

Association, Landslide Webinar Series, Vol. 11, No. 4

(2019).

Given the jurisdictional issues presented by the global

scope of the Internet, since 1999 a quasi-judicial process

has evolved to arbitrate domain name disputes through use

of mandatory contractual provisions between the domain

name registries and their customers. These provisions are

required by ICANN. 8 Many domain names (including all

.com and .org domains) are subject to ICANN’s Uniform

Domain-Name Dispute-Resolution Policy (“UDRP”)

or similar processes that address trademark-abusive

practices across borders. Under the UDRP, disputes

arising from abusive registrations of domain names are

addressed by expedited administrative proceedings filed

with an approved dispute-resolution service provider.

8. The Internet Corporation for Assigned Names and

Numbers (ICANN) helps coordinate the Internet Assigned

Numbers Authority (IANA) functions, which are key technical

services critical to managing the continued operations of the

Internet’s underlying address book, the Domain Name System

(DNS). Welcome to ICANN!, https://www.icann.org/resources/

pages/welcome-2012-02-25-en (last visited Feb. 17, 2020).

26

See ICANN, UDRP Policy, https://w w w.icann.org/

resources/pages/help/dndr/udrp-en (last visited Feb. 17,

2020). Thousands of such actions are filed every year at

a cost that is a small fraction of the cost of trademark

litigation. See World Intellectual Property Organization,

Statistics, Total Number of Cases per Month for Year

2019, https://www.wipo.int/amc/en/domains/statistics/

cases_yr.jsp?year=2019 (last visited Feb. 17, 2020); Zohar

Efroni, A Guidebook to Cybersquatting Litigation: The

Practical Approach in a Post-Barcelona.com World, 2003

U. Ill. J.L. Tech. & Pol’y 457, 470 (2003).

The UDRP process allows for relatively inexpensive

and expedited procedures for mandatory arbitration,

which is followed by a time-limited opportunity to appeal

an adverse decision to a court. See, e.g., ICANN Rules,

https://www.icann.org/resources/pages/udrp-rules-201503-11-en (last visited Feb. 17, 2020).

The resolution of a matter under the UDRP typically

takes about 45 days if uncontested, and there are

standardized complaint and response forms with strict

word or page limits. See WIPO Supplemental Rules for

UDRP Policy, https://www.wipo.int/amc/en/domains/

supplemental/eudrp/newrules.html (last visited Feb.

17, 2020). The cost to file such proceedings are low. For

instance, WIPO fees are $1500 for one domain name and

one arbitrator/panelist. WIPO, Schedule of Fees Under

the UDRP, https://www.wipo.int/amc/en/domains/fees/

(last visited Feb. 17, 2020). A complainant may seek

cancellation or transfer of domain names using the UDRP

process, provided the complainant proves the following

elements:

(i) the domain name is identical or confusingly

27

similar to a trademark or service mark in which the

complainant has rights; and

(ii) the registrant has no rights or legitimate interests

in respect of the domain name; and

(iii) the domain name has been registered and is

being used in bad faith.

ICANN, UDRP Policy, § 4(a), https://www.icann.org/

resources/pages/policy-2012-02-25-en (visited Feb. 17,

2020).

One of the major providers of the arbitration service

is the World Intellectual Property Organization (WIPO).

Based on the experience of arbitrators over the past 20

years, WIPO has compiled guidance for parties appearing

before them. In 2017, it issued the WIPO Overview of

WIPO Panel Views on Selected UDRP Questions, Third

Edition. In an answer to the question, “Do registered

trademarks automatically confer standing to file a UDRP

case?” WIPO answered, “Where the complainant holds a

nationally or regionally registered trademark or service

mark, this prima facie satisfies the threshold requirement

of having trademark rights for purposes of standing to

file a UDRP case.” WIPO, https://www.wipo.int/amc/en/

domains/search/overview3.0/ (visited Feb. 17, 2020).

While it is possible for a complainant to prove such

rights by submission of evidence of secondary meaning

similar to what is shown in court (importantly, including

consumer sur veys), the presence of a trademark

registration in the name of the complainant makes

enforcement under the UDRP process easier and less

28

costly.9

The EFF itself has at least twice availed itself of the

UDRP process, and its successes provide a good illustration

of the circumstances under which such cases are brought

and how the process works. In each case, success was

grounded in the EFF’s ability to demonstrate “the

disputed domain name is identical or confusingly similar

to a trademark or service mark in which the Complainant

has rights.” See Electronic Frontier Foundation v.

WhoisGuard Protected, Whoisguard Inc./Jan Hasko,

D2017-1355, 2017 WL 4235815, at *3 (WIPO Sept. 13, 2017)

(emphasis added). In August 2015, EFF discovered that

the domain name <electronicfrontierfoundation.org> was

being used to serve malicious code to people who went to

that site rather than to EFF’s own website, which is found

at <eff.org>. Visitors were redirected to the legitimate

website, but only after being infected with malware, in

a phishing attack that EFF discovered may have been

run by a group linked to the Russian government. See

Cooper Quintin, New Spear Phishing Campaign Pretends

to be EFF, Electronic Frontier Foundation (Aug. 27,

2015), https://www.eff.org/deeplinks/2015/08/new-spearphishing-campaign-pretends-be-eff (visited Feb. 17, 2020).

EFF used its registered trademark in the UDRP action

to establish its rights and to assert that the respondent

was using a domain name identical or confusingly similar

9. UDRP panelists take record ownership of the relevant

trademark very seriously. For example, in NBA Props. Inc., v.

Adirondack Software Corp., D2000-1211, 2000 WL 35643697, at

*4 (WIPO Dec. 8, 2000), the panel denied the request to transfer

the domain name <knicks.com> because the record owner of the

trademark KNICKS was Madison Square Garden, L.P., not the

licensee NBA Properties, Inc.

29

to EFF’s registered trademark. Electronic Frontier

Foundation v. Shawanda Kirlin, D2015-1628, 2015 WL

7424214, at *2 (WIPO Nov. 10, 2015). After meeting that

crucial, first prong of the test, EFF contended that the

facts “strongly suggest that the disputed domain name

was registered for the purpose of supporting a phishing

campaign, i.e. an attempt to discover sensitive information

such as usernames, passwords or personal details, by

confusing consumers into believing that the attacker, to

whom information is actually being provided, is in fact a

different, trustworthy entity to whom consumers desire

to provide information.” Id.

The UDRP Panel had some difficulty in resolving

an apparent discrepancy between the EFF’s description

of itself in the complaint as a nonprofit California

corporation, while the trademark registration certificate

was issued to a Massachusetts corporation. The panelist

searched the USPTO’s database to match the address

of the trademark owner to the EFF’s address given

in the UDRP Complaint. “[G]iven that the name of the

Complainant is the same as the name of the trademark

owner of record, that they have the same address, and that

the Respondent did not contest the trademark rights of

the Complainant, the Panel is prepared to accept that the

Complainant has rights to the trademark ELECTRONIC

FRONTIER FOUNDATION.” Id. The Panel found that

the Respondent’s conduct constituted both bad faith

registration and use and thus ordered the domain to be

transferred to EFF. Id.

Two years later, EFF filed another UDPR action,

this time involving <electronicfrontier.org>. Electronic

Frontier Foundation v. WhoisG uard Protected ,

30

Whoisguard Inc./Jan Hasko, D2017-1355, 2017 WL

4235815, at *3 (WIPO Sept. 13, 2017). This domain name

was being used to post a copy of the EFF website as it

had existed a year earlier, including reproductions of

EFF’s own registered trademark. EFF asserted that the

public would perceive that the “Respondent either is the

Complainant or is authorized, sponsored, or endorsed by

the Complainant despite there being no such relationship.”

Id. EFF “submits that the pairing of ‘electronicfrontier’

with the ‘.org’ gTLD is more likely to give the public the

wrong impression that the site is operated by” EFF. Id.

EFF was concerned that “the disputed domain name could

be used for illegitimate phishing purposes,” referring

to its own 2015 case in which malware was served. Id.

The panel relied on the EFF’s rights in its registered

trademark to order a transfer. Id.

Because the EFF had registered its trademark, it had

trademark protection against bad actors in cyberspace

and was able to quickly and efficiently obtain orders to

transfer domain names to it. Both cases took about three

months to resolve from the date that EFF learned of the

problem. That speed and efficiency was supported by valid

trademark registrations. EFF advances a theory that

would eviscerate the UDRP process, yet it took advantage

of it when it was itself the victim of attack. There is no

reason others should be unable to avail themselves of

these same advantages if they can prove that their domain

names meet the “primary significance” test.

31

CONCLUSION

As argued above, the BPLA contends that domain

name marks like BOOKING.COM must be assessed as

a whole, based on consumer perception. Thus, the BPLA

respectfully urges the Court to reject the USPTO’s

proposed per se rule and to affirm the judgment below.

Respectfully submitted,

Susan Okin Goldsmith

Erik Paul Belt

McCarter & English, LLP

Counsel of Record

Two Tower Center Boulevard, Lori Jane Shyavitz

24th Floor

A nne E. Shannon

East Brunswick, NJ 08816

A lexander L. Ried

McCarter & English, LLP

265 Franklin Street,

14th Floor

Boston, MA 02110

(617) 449-6500

ebelt@mccarter.com

Attorneys for Amicus Curiae