Lisa Blatt, with Williams & Connolly. Lisa Blatt, with Williams & Connolly.

The Supreme Court will lead off with a trademark case when it resumes oral arguments next week.

USPTO v. Booking.com is slated to go down in history as the court's first ever live-audio virtual hearing. The court hasn't announced yet who'll argue, but it seems likely that Williams & Connolly partner Lisa Blatt, who's counsel of record for Booking.com B.V., will have the honor of opposing deputy solicitor general Malcolm Stewart, who argued for the U.S. Patent and Trademark Office in its three most recent Supreme Court cases.

Williams & Connolly will bear the weight not only of Booking.com B.V., which says its invested $5 billion in advertising and marketing its name, but also a virtual army of businesses who've either registered or want to register a generic name combined with dot.com. The PTO argues that such names are per se generic. Salesforce.com is headlining one amicus curiae brief, while Cars.com LLC, Dictionary.com LLC and Wine.com LLC are among 15 others that have banded together as amicus Coalition of .Com Brand Owners.

"Under the USPTO's proposed rule, none of these businesses could obtain a trademark registration for their brands," the coalition warns in a brief signed by Thad Chaloemtiarana of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson. "Foreclosing any possibility of registration would make it more difficult for these businesses to stop consumer confusion in the marketplace, notwithstanding the fact that these businesses encounter the same types of infringements and counterfeiting that other brand owners encounter."

A longstanding rule of trademarks is that generic names can't be registered. If you sell apples you cannot register the name "Apples" with the PTO because it would give you a monopoly on the name of the product. (A computer company can register Apple, because "arbitrary marks" don't pose the same threat.)

The PTO argues that adding .com isn't enough to elevate a generic mark to descriptiveness. It's invoking an 1888 Supreme Court ruling that adopted a similar rule for the addition of "Company" or "Inc." to a name. "Parties united to produce or sell wine, or to raise cotton or grain, might style themselves Wine Company, Cotton Company, or Grain Company; but by such description they would in no respect impair the equal right of others engaged in similar business to use similar designations," Justice Stephen Field wrote in that case, Goodyear's India Rubber Glove Mfg. v. Goodyear Rubber. "The same rationale applies to top-level domains like '.com,'" the PTO argues in briefs to the court, "which indicate only that an entity has an online presence."

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More recently, the Federal Circuit has upheld the PTO's refusal to register Hotels.com and Mattress.com, and the Ninth Circuit has found AOL's Advertising.com generic.

The agency is getting amicus support from the Electronic Frontier Foundation and a group of intellectual property scholars led by Harvard's Rebecca Tushnet, who are cautioning against giving generic mark holders too big of a stick to ward off competitors. "For example, [Booking.com] might seek to exclude its competitors from using booking.biz, booking.co, booking.inc, or booking.company as a domain name," writes EFF staff attorney Alex Moss.

Booking.com, which won a split decision in this case at the Fourth Circuit, argues that a lot has changed in the 130 years since Goodyear's was decided. The Lanham Act "repudiated" the decision, the company says. Under the statute, the question is whether consumers identify a mark with a single brand. And Booking.com submitted a consumer survey that showed 74% identified it as a brand, compared to only 30% who (incorrectly) identified Washingmachine.com as a brand.

Blatt and her colleagues also argue that the PTO doesn't even follow its own test. "The national grocery chain FOODS CO is indeed a company selling foods, just as THE WIG COMPANY is a company selling wigs and THE FLAGPOLE COMPANY is a company selling flagpoles," Blatt writes. "Seeking a date? Try DATING.COM. Want to impress with concert tickets? TICKETS.COM or CONCERT.COM can get them. Hoping for nice weather? Check WEATHER.COM."

All of those names are registered on the PTO's principal or supplemental register, which means they're not generic, Booking.com argues. Even after the government petitioned for certiorari last summer, the PTO registered Rentals.com, Concert.com and Roommates.com, argues Blatt, who's joined on the brief by Williams & Connolly partner Sarah M. Harris and associate Eden Schiffmann along with attorneys from Debevoise & Plimpton and Foley & Lardner.

Amici Salesforce.com, The Home Depot and BA Sports Nutrition are offering support. The government is "elevating the convenience of bright-line rules above statutory text and structure, judicial precedent, the interests of consumers, and the realities of the marketplace," they argue in a brief signed by Gibson, Dunn & Crutcher partner Thomas Hungar.

The American Intellectual Property Law Association argues that without trademark protection, a Booking.com competitor could theoretically open up a storefront called "Booking.com" and deceive consumers into believing that it's associated with the online service. Amicus Internet Commerce Association adds that to fight domain name typo-squatting, the owner of a legitimate domain name has to show ICANN that its name is trademarked.

The PTO counters that the Lanham Act makes no mention of overruling Goodyear's, and that unfair competition law provides plenty of protection against typo-squatting or other efforts to mislead consumers.

The agency gets a half-million trademark-registration applications annually, and it concedes that occasionally its examiners erroneously register a mark. But those errors don't bind the agency to wrongly register similar marks in the future, the PTO argues. And it has rejected names such as Creditcards.com, Drugstore.com, Petstore.com, Rentalcars.com, Sportsbetting.com and Vacationrentals.com as too generic, the PTO notes in a lengthy appendix to its reply brief.

"To the extent that trademark examiners have erred in permitting registration of some fraction of the marks in respondent's brief and appendix, mechanisms exist for correcting those mistakes," the PTO argues. "But [Booking.com] cannot leverage any such errors to overturn this Court's precedent."

PTO general counsel Sarah T. Harris, solicitor Thomas Krause, senior counsel Christina Hieber and associate solicitor Molly Silfen appear on the agency's brief, along with solicitor general Noel Francisco, assistant attorney general Joseph Hunt, deputy solicitor general Stewart, assistant to the solicitor general Erica Ross, and DOJ attorneys Mark Freeman, Daniel Tenny and Weili Shaw.