Suzanna M. M. Morales
A recent federal court decision that clears the way for federal trademark registration of the mark BOOKING.COM may signal a departure from current practice for the registration of marks made up of generic terms in domain names.
On August 9, 2017, the U.S. District Court for the Eastern District of Virginia reversed a decision of the U.S. Patent and Trademark Office’s (USPTO) Trademark Trial and Appeal Board, holding that the company Booking.com B.V. was entitled to registration of its BOOKING.COM mark for various travel reservation and related services, even though the terms “booking” and “.com” by themselves are generic for the services. Further, the court found that the combination of a generic word and a top-level domain “generally has source identifying significance,” a departure from the conventional guidance of the USPTO.
The BOOKING.COM Applications
The USPTO had refused registration to four applications for BOOKING.COM in standard characters (word only) and various stylized forms on the basis that the marks were generic for the services.
Generic terms (i.e., the name of the goods or services) are not eligible for registration because such terms are not capable of identifying the source of the goods or services. Allowing registration of these marks could prevent others from using a common term for the goods. Terms that describe some characteristic of the goods or services are only capable of registration if they have “acquired distinctiveness,” which means that the term has taken on a meaning in the public view so that people see the term as a trademark or service mark identifying the goods or services rather than simply describing the goods or services.
After the applications were refused, Booking.com appealed the refusal of registration to the USPTO’s Trademark Trial and Appeal Board (TTAB), which hears challenges to the decisions of the USPTO’s examining attorneys on pending applications. The TTAB upheld the refusals to register, finding that the addition of “.com” to “booking” did not negate the generic character of “booking” for travel reservations.
Options for Challenging Refusal of an Application
The losing party in a TTAB challenge has two options: 1) appealing the refusal to the Federal Circuit Court of Appeals, a federal appeals court that hears intellectual property matters or 2) filing a new complaint in a federal district court. In this case, Booking.com filed a new action in the Eastern District of Virginia, which had important implications for the evidence it was able to present to the court.
When a trademark applicant appeals to the Federal Circuit, the court considers the application on the record that was presented to the TTAB, using the standard of whether the decision of the TTAB to refuse registration was supported by substantial evidence. On the other hand, parties to a new case filed in federal district court can submit new evidence, and the court makes its determination de novo, that is, without regard to the TTAB’s factual findings and decisions. Though the option of proceeding de novo before the district may seem attractive because of the ability to present new evidence, due to a recent change in law, the USPTO may be entitled to reimbursement of its expenses, which may include attorneys’ fees, from the party bringing the action, regardless of the outcome of the case. (The parties in the BOOKING.COM case currently are briefing the USPTO’s request for reimbursement.)
The Decision – BOOKING.COM Is Not Generic
The issue to be decided was whether the combination of “booking” with the top-level domain (TLD) “.com” was generic – and not entitled to registration – or descriptive – and entitled to registration with a showing of acquired distinctiveness.
The court first found that the term “booking” is generic for the services in Booking.com’s application. This could have been the end of the story if the case was before the Federal Circuit, where a number of cases have held that the addition of a top-level domain (TLD) like .com to a generic term creates a term that is still generic. But the Eastern District of Virginia, using the less deferential standard of de novo review, distinguished prior Federal Circuit cases that had considered similar facts.
The court, noting that the public perception of domain names has changed since the first Federal Circuit case on the issue in 2004, found that a domain name is by its nature unique. Rather than considering whether “booking” alone is the type of service Booking.com provides, the court focused on whether “booking.com” is the class of service.
Notably, the court found Booking.com‘s survey on consumer impressions of the mark, which indicated that consumers believed the mark to be a brand name, to be persuasive. The survey was among the new evidence the company submitted, which would not have been permitted in an appeal to the Federal Circuit.
Having found that booking.com is not generic for the company’s services, the court then went on to hold that the mark had acquired the source-identifying distinctiveness for hotel reservation services necessary for registration of a descriptive mark, but not for travel agency services. The court found acquired distinctiveness based on the extensive evidence of the company’s advertising and sales. (Two of the applications at issue, which contained design and color elements in addition to the wording, were sent back to the USPTO for review of whether these additional elements were eligible for protection.)
The Future for Domain Names?
Although the case marks a departure from the conventional wisdom about trademark registration, it is important to note that Booking.com may still have relatively limited protection for its mark. The court emphasized that it was not giving Booking.com a monopoly on the term “booking,” and even with a federal trademark registration Booking.com could not prevent others from using domain names that included “booking.com” along with other words. Still, the ability to federally register the mark provides important evidentiary presumptions for enforcement purposes.
The decision also highlights the potential implications to a trademark applicant of deciding whether to appeal a refusal of registration to the Federal Circuit or file a new case in a district court as Booking.com did here.
Whether this decision will change trademark practice remains to be seen. The USPTO apparently maintains its position that adding a TLD to a generic word generally is not sufficient to create a mark capable of registration, and the USPTO may appeal this decision. This will continue to be an issue to watch.