Virginia Lawyers Weekly//February 15, 2019
Virginia Lawyers Weekly//February 15, 2019//
Where the government failed to demonstrate that booking.com was a generic term that could not be trademarked, and Booking.com demonstrated that the descriptive term has gained a secondary meaning, the website is entitled to a trademark.
Booking.com operates a website on which customers can book travel and hotel accommodations. It has used the name booking.com since at least 2006. In 2011 and 2012, Booking.com filed four trademark applications for the use of booking.com as a word mark. Among other things, it sought registration for online hotel reservations.
The United States Patent and Trademark Office rejected all four applications, finding that the marks were not protectable because booking,com was generic as applied to the relevant services. Booking.com appealed to the Trademark Trial and Appeal Board which affirmed the rejection of the trademark applications. Booking.com then appealed the board’s decision by filing a civil action in the Eastern District of Virginia.
The district court held that although booking was a generic term for the services offering, booking.com as a whole constituted a descriptive mark. The court further held that Booking.com had demonstrated that the proposed mark had acquired a secondary meaning and was therefore protectable with respect to the hotel reservation services it offered. The court further ordered Booking.com to pay the expenses incurred by the USPTO, including attorneys’ fees. Both parties appeal now appeal to this court.
Once a term has been deemed generic, it cannot subsequently become non-generic, even if consumers have come to recognize the term as brand-specific. Whether a term is generic requires a determination as to whether the term, as a whole, is primarily understood by the relevant public to refer to the goods or services being offered or the source or brand providing such services or goods.
The district court did not err in concluding that the USPTO failed to demonstrate that booking.com, as a whole, is understood by the relevant public to refer to general reservation services rather than the specific company, Booking.com. Specifically, the court’s reliance on the lack of evidence that consumers commonly refer to online reservation systems as “bookings.com” was entirely appropriate and the mere fact that other domain names, such as hotelbooking.com, contain the term “booking.com” does not necessarily mean the term is generic. In addition, it was proper for the district court to consider the consumer survey showing that 74.8 percent of respondents identified booking.com as a brand name. Indeed, consumer surveys are the preferred method for evaluating whether a term is generic.
The USPTO’s claim that adding a top-level domain like “.com” to a generic second-level domain like “booking” necessarily renders the term generic is without merit. Unlike other commercial indicators such as company or store, “.com” has the ability to signify to the relevant public a specific location on the internet.
Adding “.com” to a second-level domain can result in a non-generic, descriptive mark upon a showing of primary significance to the relevant public. The consumer surveys sufficiently support the district court’s finding that this is what happened in this case.
While the USPTO challenged the district court’s determination that the mark is descriptive, it does not challenge the court’s determination that the mark, if properly determined to be descriptive, has acquired secondary meaning and can, therefore, be trademarked.
Under the Lanham Act, if a ruling of the USPTO is challenged in district court, the government is entitled to all expenses incurred by the proceeding, regardless of whether the final decision is in their favor or not. The precedent of this circuit is to include attorneys’ fees in the calculation of those expenses. While this precedent has been called into question by decisions in other courts, it remains valid and binding here.
Wynn, J., concurring in part and dissenting in part:
In the face of recognizing that “booking” is a generic term, the district court creatively decided that combining the generic term “booking” with the generic top-level domain “.com” rendered it non-generic. In doing so, the district court’s judgment—which the majority opinion concedes was in legal error, but nonetheless declines to set aside—allows Booking.com have its cake and eat it too. Booking.com gets to operate under a domain that merely describes the nature of its business and exclude its competitors from doing the same.
Accordingly, although I agree with much of the analysis in the majority opinion, I part ways with my colleagues’ decision to nevertheless affirm the district court’s judgment that booking.com is a protectable trademark.
Booking.com B.V. v. United States Patent and Trademark Office, Case Nos. 17-2458, 17-2459, Feb. 4, 2019. 4th Cir. (Duncan), Appeal from EDVA at Alexandria (Brinkema). Tyce R. Walters for Appellants/Cross-Appellees; Jonathan Ellis Moskin for Appellees/Cross-Appellants. VLW 019-2-040. 46 pp.