The Court was further persuaded by the fact that Congress saw fit to include a mens rea requirement in various other places in the Lanham Act, but included no such requirement in the provisions pertaining to infringement: “Without doubt, the Lanham Act exhibits considerable care with mens rea standards. The absence of any such standard in the provision before us, thus, seems all the more telling.” Id. at3-4.

Romag Fasteners means that a trademark owner may elect to recover either its own losses caused by the defendant’s infringement or the defendant’s profits earned as a result of its infringing conduct. The ability to make this election, without having to satisfy a higher threshold to disgorge an infringer’s profits, should provide powerful ammunition to trademark owners in infringement disputes. No longer will an infringer be permitted to profit from the challenges that plaintiffs oftentimes have in proving damages in trademark cases.

In a separate case that was just argued this week, the Court was asked to enact barriers to registration, and to potentially subject numerous registered trademarks to cancellation, if the mark in question includes the suffix, .com. On Monday, prompted by the health and safety risks associate with COVID-19, the Supreme Court for the first time heard oral argument via audio livestreaming in the case United States Patent & Trademark Office v. Booking.com B.V. In the underlying action, Booking.com challenged the USPTO’s rejection of its application to register “Booking.com” on the grounds it is a generic term. The district court held that the mark was descriptive, not generic, and protectable so long as Booking.com demonstrated the mark had acquired secondary meaning. The Fourth Circuit Court of Appeal affirmed, finding that the USPTO failed to overcome its burden to show “Booking.com” is generic. Id. at 181.

On appeal to the Supreme Court, the USPTO took the position that simply adding “.com” to an otherwise generic term cannot create a protectable trademark. The USPTO relied on a 130-year old case, Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., as controlling. It argued that Goodyear stands for the proposition that trademark rights cannot be established by merely adding “Company” or “Inc.” to a generic term, and adding “.com” is the modern-day equivalent as it merely means that a business is doing business on the internet. In questions directed to the USPTO’s counsel, the Justices called into question the precedential value of Goodyear in view of the time that has passed since that decision, the markedly different internet-based era in which businesses operate today, and the intervening enactment of the Lanham Act that sets forth the primary significance test for determining whether a mark is generic. Chief Justice Roberts suggested that it makes more sense to follow the statutory test, which is temporally closer to today than a 130-year-old case.

Justice Roberts further suggested that the case is more analogous to 1-800 vanity marks, e.g., “1-800-Plumbing,” which have been allowed registration than it is to Goodyear. For her part, Justice Ginsburg raised a concern that accepting the USPTO’s argument would subject a wide number of currently registered “.com” marks to cancellation. Justice Breyer opined that registering “.com” marks is no different than permitting registration of marks that incorporate a physical address or telephone number; both of which the USPTO has seen fit to register. And Justice Gorsuch queried why doctrinal rules set forth in the Lanham Act, which is primarily concerned with consumer confusion, are not sufficient to address registration of ostensibly generic “.com” marks.

Booking.com argued that the hard and fast rule the USPTO advocated regarding “.com” marks was overly simplistic and at odds with the primary significance test set out in the Lanham Act. According to Booking.com, the primary significance test is the only authorized test for determining whether a putative trademark is generic. Booking.com further argued that in applying the test, the entire mark must be considered as a whole. The Justices posed pointed questions to counsel for Booking.com. Chief Justice Roberts expressed concern that if “Booking.com” achieves registration, it would prevent competitors from being able to accurately describe their goods and services to the public. In response to Booking.com’s argument that Goodyear did not survive enactment of the Lanham Act and its primary significance test for genericness, Justice Gorsuch noted that the primary significance test appears only in the cancellation portion of the statute and not in the portion pertaining to registration, suggesting that perhaps Congress did this intentionally in deference to Goodyear.

Justice Thomas asked whether Booking.com actually needs the primary significance test to prevail, and Justice Ginsberg asked why unfair competition laws, separate and apart from the Lanham Act, do not provide adequate relief for purported “passing off.” For his part, Justice Breyer posed questions regarding the monopolistic effect that would result if “Booking.com” were registered, questioned the validity of the survey performed by Booking.com’s expert, and echoed Justice Ginsburg’s thoughts regarding the sufficiency of unfair competition law to address Booking.com’s concerns. In line with Justice Breyer, Justice Alito was concerned that Booking.com may be seeking a degree of monopoly power that no one could have achieved prior to the Internet Age. Justice Sotomayor went so far as to say she was “on the margin with respect to [the Booking.com mark] and would have said that ‘booking’ standing alone is generic, even with inclusion of ‘.com.’”

Although the livestream presentation of these arguments provided the public with unprecedented real-time access to the Supreme Court in action, the presentation format was not ideal for the parties or their counsel who did not have the benefit of nonverbal cues such as body language and eye contact in assessing the persuasiveness of their arguments and in gauging which way the Justices were leaning.

Ultimately, the Supreme Court did not tip its hand as to what its final ruling might be. Until the Court decides the fate of “.com” marks that incorporate a purportedly generic term, trademark owners should be measured when seeking registration or enforcement of such marks, and they should consider all risks and potential ramifications.