April 27, 2016
Booking.com Files Civil Action Against USPTO for Trade Mark Refusal
Booking.com Files Civil Action Against USPTO for Trade Mark Refusal

Between December 2011 and November 2012, Booking.com B.V. (‘Booking.com’) filed four US Trade Mark Applications to register BOOKING.COM both as a word mark and in various stylised forms in relation to various Class 39 (travel arrangement) and Class 43 (hotel reservation) services.  All four applications were rejected by the US Patent and Trade Mark Office (‘USPTO’) on the grounds that the marks are merely descriptive or generic in respect of the identified services, since BOOKING.COM can obviously and immediately “be understood primarily to refer to an online service for making bookings" by the relevant public. Following a series of responses filed by Booking.com, final refusals were nonetheless issued by the USPTO, which Booking.com subsequently appealed with the Trademark Trial and Appeal Board (‘TTAB’).  On 18 February 2016, the TTAB rejected Booking.com’s appeal and upheld the USPTO examiner’s refusal of the marks on the grounds that Booking.com had failed to prove that the marks had acquired a secondary meaning.

Section 21(b) of the US Trademark Act of 1946 (the "Lanham Act"), provides that a party that is dissatisfied with a final decision of the TTAB may initiate a civil action in a Federal District Court challenging the decision in question.  Accordingly, on 15 April 2016, Booking.com filed a civil lawsuit with the US District Court for the Eastern District of Virginia (Alexandria Division) in order to obtain the registration of its marks on the basis that the TTAB had erred in its findings.  

In their lawsuit, Booking.com argue that it is impossible to use “booking.com” in a grammatically coherent way in order to generically refer to any services at all and they submit that there is no evidence that any other parties offering travel agency services refer to themselves as “booking.com’s”. They also argue that a consumer survey (conducted after the TTAB decision) demonstrated that 75% of consumers recognise BOOKING.COM as a trade mark, not as a common name, so the mark has acquired distinctiveness in the marketplace since use first began in 2006. They also assert that evidence of its extensive advertising, commercial impact, market share, and consumer loyalty had been submitted to establish the acquired distinctiveness of the mark BOOKING.COM, but the TTAB incorrectly dismissed the evidence as being insufficient to show “an impression of single source identification”.   

This case is significant as it demonstrates the frequent conflict that we witness between common marketing strategy and good legal practice.  Many businesses wish to use generic terms within their domain names so that they clearly communicate the nature of the goods and services being offered on their websites. Whilst this may assist customers using those descriptive search terms to find them on the Internet, it is also a double-edged sword. As a matter of legal policy, all generic or descriptive terms must always be kept free for all traders to use, hence registered trade mark protection will never be granted to give one trader the exclusive right to use them. This means that the primary brand identity of that website cannot be protected as a trade mark, leaving competitors free to adopt a similar or identical mark, which may of course cause confusion and divert customers away.   

We will continue to monitor the developments and outcome of this matter with interest.

Trademarks /  Travel /  Advertising

Found this article interesting today?
Send us your thoughts: