Justices Voice Reservations About A Bright-Line Genericness Test In Booking.com

Originally published May 6, 2020

The Supreme Court heard oral argument via teleconference in United States Patent and Trademark Office v. Booking.com B.V. on Monday, the Court's first oral argument since it closed its doors in March in response to the COVID-19 outbreak. 

Chief Justice Roberts acted as a sort of "moderator" to keep the arguments moving at a brisk pace as each justice asked questions in order of seniority.  Strikingly, Justice Thomas, who rarely asks questions during oral argument, participated in questioning.

Justice Thomas asked a line of questions about distinguishing the BOOKING.COM trademark from those discussed in the precedent relied on by the USPTO, namely the Supreme Court's 130-year old Goodyear Rubber Manufacturing Co. decision.  In that case, the Supreme Court held that merely adding "Company" or "Inc." to a generic term (such as "Wine Company") would not create a protectable trademark.  The USPTO argued that the holding in Goodyear