October 13, 2019

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Booking.com is not Generic: Fourth Circuit Addresses Protection for ".Com" Trademarks

Affirming the district court’s summary judgment ruling on the protectability of the trademark BOOKING.COM, the US Court of Appeals for the Fourth Circuit weighed in on the somewhat controversial issue of the genericness of a trademark that contains a top-level domain such as “.com.” Booking.com B.V. v. The United States Patent and Trademark Office; Andrei Iancu, Case Nos. 17-2458, -2459 (4th Cir. Feb. 4, 2019) (Duncan, J) (Wynn, J, dissenting). The Court also affirmed the district court’s requirement that the trademark applicant, Booking.com, pay the US Patent and Trademark Office’s (PTO’s) attorneys’ fees incurred in the district court action under 15 USC § 1071(b)(3).

At the outset of its opinion, the Fourth Circuit provided a primer on the required distinctiveness of a trademark and explained the distinctiveness spectrum, which categorizes a proposed trademark as generic, descriptive, suggestive or arbitrary/fanciful. Generic terms are never distinctive, while descriptive trademarks may become distinctive with certain evidence of acquired distinctiveness. In this case, these two distinctiveness categories were at issue, with Booking.com arguing that its mark was descriptive, and the PTO arguing that BOOKING.COM was generic.

Booking.com provides online travel reservation services and has done so under the name BOOKING.COM since 2006. Between 2011 and 2012, the company filed US trademark applications to register BOOKING.COM. The PTO rejected the applications, finding the mark generic for online hotel reservation services. After the Trademark Trial and Appeal Board affirmed the examining attorney’s refusals of four BOOKING.COM applications, Booking.com appealed by filing a civil action in the Eastern District of Virginia. In the district court, the company submitted new evidence that BOOKING.COM was perceived by consumers as descriptive or suggestive. This evidence included a “Teflon survey”—the survey format most widely used to address the genericness issue.

The district court concluded that the company met its burden of demonstrating that the BOOKING.COM trademark had acquired secondary meaning and was thus protectable for hotel reservation services. The district court also granted the PTO’s motion for payment of its expenses totaling more than $76,000. Both parties appealed to the Fourth Circuit, with the PTO disputing the protectability of BOOKING.COM as a trademark and the applicant disputing the attorneys’ fee award.

On appeal, the PTO challenged only the determination that the BOOKING.COM mark was not generic and otherwise conceded that Booking.com had shown secondary meaning in the mark if the court ultimately found the mark to be descriptive. Considering this limited issue, the Fourth Circuit affirmed the district court and found BOOKING.COM to be a protectable trademark and not generic.

The Fourth Circuit explained that the PTO always has the burden of establishing that a proposed mark is generic under the three-step test, which requires (1) identification of the class of product or service to which use of the mark is relevant, (2) identification of the relevant consuming public, and (3) determination of whether the primary significance of the mark to the relevant public is an indication of the nature of the class of the product or services to which the mark relates (rather than as a brand), which suggests that the mark is generic. On appeal, only step three of the inquiry was in dispute.

Considering BOOKING.COM as a whole, rather than its component parts, the Fourth Circuit examined evidence of the public’s understanding of the mark and found that the PTO failed to satisfy its burden of proving that the relevant public understands BOOKING.COM, taken as a composite mark, to refer to general online hotel reservation services, rather than referring to the company as a brand. In arriving at its conclusion, the Court pointed to two pieces of evidence that weighed in favor of BOOKING.COM being non-generic: the PTO’s lack of evidence demonstrating that the public uses “booking.com” generically to refer to online hotel reservation services and Booking.com’s Teflon survey. The Court pointed out that consumer surveys are the preferred method of proving genericness, and the results of Booking.com’s survey showing that almost 75 percent of respondents identified BOOKING.COM as a brand name.

Finally, as it relates to the issue of genericness, the Fourth Circuit rejected a per se rule proposed by the PTO that adding “.com” to a generic term like “booking” is necessarily generic. Here, the Court again honed in on the importance of considering a mark in its whole, composite form, which may be protectable with sufficient evidence of acquired distinctiveness. In concluding that BOOKING.COM has the requisite acquired distinctiveness, the Court affirmed the lower court’s grant of summary judgment finding BOOKING.COM protectable as a trademark.

Turning to Booking.com’s appeal on the issue of paying the PTO’s attorneys’ fees, the Fourth Circuit noted the applicable statute, which requires that a trademark applicant pay “all of the expenses of the proceeding” if the applicant decides to challenge the PTO’s ruling in the district court. The court cited its 2015 precedent in Shammas, which qualified attorneys’ fees as applicable “expenses.” The Court acknowledged certain challenges to Shammas, but because the decision remains the law in the Fourth Circuit, the Court affirmed the district court’s grant of the PTO’s attorneys’ fees.

Judge Wynn issued dissent on the issue of genericness, classifying it as a “problem that Booking.com chose to bring upon itself by choosing a generic name for its online presence.” Wynn opined that the district court’s ruling should not be upheld, as being based on faulty legal reasoning, namely, that a generic term combined with the “.com” top-level domain is presumptively descriptive and thus protectable upon a showing of acquired distinctiveness. Wynn also cited a few other “.com” trademark cases where the decision on genericness went the other way.

© 2019 McDermott Will & Emery

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About this Author

Sarah Bro, McDermott Will Emery Law Firm, Intellectual Property Attorney
Associate

Sarah Bro is an associate in the law firm of McDermott Will & Emery LLP and is based in the Firm’s Orange County office.Sarah focuses her practice on trademark prosecution and trademark litigation support.

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