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United States Patent and Trademark Office, et al. v. Booking.com B.V.

Paid petition · United States Court of Appeals for the Fourth Circuit, No. 17-2458, 17-2459 · judgment February 4, 2019

Decided · June 30, 2020
Pre-decision estimate: 31% cert probability (95% interval 21%–42%)

Before the decision, about 7.4× the 4.1% base rate. The model weighted this up for a federal-government petitioner, counsel who has won certiorari before, and a dissent in the court below (flagged in the petition).

Question presented

Under the Lanham Act, 15 U.S.C. 1051 et seq., generic terms may not be registered as trademarks. The question presented is as follows: Whether the addition by an online business of a generic top-level domain (".com") to an otherwise generic term can create a protectable trademark. PRESS RELEASE OF MARCH 16, 2020 IN KEEPING WITH PUBLIC HEALTH PRECAUTIONS RECOMMENDED IN RESPONSE TO COVID-19, THE SUPREME COURT IS POSTPONING THE ORAL ARGUMENTS CURRENTLY SCHEDULED FOR THE MARCH SESSION. PRESS RELEASE OF APRIL 13, 2020 RESCHEDULED FOR ORAL ARGUMENTS BY TELEPHONE CONFERENCE. THE JUSTICES AND COUNSEL WILL ALL PARTICIPATE REMOTELY.

Counsel of record

For petitioner
Noel John Francisco
Jones Day

For respondent
Lisa S. Blatt
Williams & Connolly LLP

Case

Conference history
Distributed for 2 conferences

Amicus briefs
15 merits
(3 supporting pet./neither, 12 respondent)

Argument & decision

Argued May 4, 2020 — Erica L. Ross · Lisa S. Blatt. Audio and transcript

Decided June 30, 2020. Opinion by Ginsburg.

Proceedings

  1. Aug 03 2020
    JUDGMENT ISSUED.
  2. Jun 30 2020
    Adjudged to be AFFIRMED. Ginsburg, J., delivered the opinion of the Court, in which Roberts, C. J., and Thomas, Alito, Sotomayor, Kagan, Gorsuch, and Kavanaugh, JJ., joined. Sotomayor, J., filed a concurring opinion. Breyer, J., filed a dissenting opinion.
  3. May 04 2020
    Argued. For petitioners: Erica L. Ross, Assistant to the Solicitor General, Department of Justice, Washington, D. C. For respondent: Lisa S. Blatt, Washington, D. C.
  4. Apr 15 2020
    RESCHEDULED FOR ARGUMENT on Monday, May 4, 2020.
  5. Apr 13 2020
    Argument to be rescheduled for May 2020.
  6. Mar 16 2020
    ORAL ARGUMENT POSTPONED.
  7. Mar 13 2020
    Reply of petitioners United States Patent and Trademark Office, et al. filed. (Distributed)
  8. Feb 20 2020
    The record is located on PACER. Sealed record material from the USCA 4th Circuit electronically received.
  9. Feb 19 2020
    Record requested from the U.S.C.A. 4th Circuit.
  10. Feb 19 2020
    CIRCULATED
  11. Feb 19 2020
    Brief amici curiae of Trademark and Internet Law Professors filed. (Distributed)
  12. Feb 19 2020
    Brief amici curiae of Salesforce.com, Inc., et al. filed. (Distributed)
  13. Feb 19 2020
    Brief amici curiae of Survey Scholars and Consultants filed. (Distributed)
  14. Feb 19 2020
    Brief amicus curiae of The International Trademark Association filed. (Distributed)
  15. Feb 19 2020
    Brief amicus curiae of The Association of Amicus Counsel filed. (Distributed)
  16. Feb 19 2020
    Brief amicus curiae of Intellectual Property Owners Association filed. (Distributed)
  17. Feb 19 2020
    Brief amici curiae of Professor Peter N. Golder, Ph.D., and other Marketing Academics filed. (Distributed)
  18. Feb 19 2020
    Brief amicus curiae of Internet Commerce Association filed. (Distributed)
  19. Feb 19 2020
    Brief amicus curiae of Boston Patent Law Association filed. (Distributed)
  20. Feb 19 2020
    Brief amicus curiae of The Intellectual Property Law Association of Chicago filed. (Distributed)
  21. Feb 19 2020
    Brief amicus curiae of New York Intellectual Property Law Association filed. (Distributed)
  22. Feb 19 2020
    Brief amicus curiae of Coalition of .Com Brand Owners filed. (Distributed)
  23. Feb 12 2020
    Brief of respondent Booking.com B.V. filed.
  24. Jan 31 2020
    SET FOR ARGUMENT on Monday, March 23, 2020.
  25. Jan 13 2020
    Brief amici curiae of Trademark Scholars in support of neither party filed.
  26. Jan 13 2020
    Brief amicus curiae of American Intellectual Property Law Association in support of neither party filed.
  27. Jan 13 2020
    Brief amicus curiae of Electronic Frontier Foundation filed.
  28. Jan 06 2020
    Joint appendix filed.
  29. Jan 06 2020
    Brief of petitioners United States Patent and Trademark Office, et al. filed.
  30. Dec 10 2019
    Motion to extend the time to file the briefs on the merits granted. The time to file the joint appendix and petitioners' brief on the merits is extended to and including January 6, 2020. The time to file respondent's brief on the merits is extended to and including February 12, 2020.
  31. Dec 09 2019
    Motion for an extension of time to file the briefs on the merits filed.
  32. Nov 08 2019
    Petition GRANTED.
  33. Nov 04 2019
    DISTRIBUTED for Conference of 11/8/2019.
  34. Oct 09 2019
    DISTRIBUTED for Conference of 11/1/2019.
  35. Aug 21 2019
    Reply of petitioners United States Patent and Trademark Office, et al. filed.
  36. Aug 07 2019
    Brief of respondent Booking.com B.V. in opposition filed.
  37. Jul 05 2019
    Petition for a writ of certiorari filed. (Response due August 7, 2019)