By Suzanna M. M. Morales
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The Fourth Circuit Court of Appeals recently upheld a district court decision finding that BOOKING.COM can be registered as a trademark because it is not generic for hotel reservation services.
In a prior blog post, we discussed the lower court’s decision. The protection of the mark BOOKING.COM hinged on whether the term was generic or descriptive.
The primary significance of the mark as a whole is descriptive, not generic
In the recent appeals court decision, the Fourth Circuit held that the U.S. Patent and Trademark Office (USPTO), in determining whether a term is entitled to trademark registration, always bears the burden of showing that the proposed mark is generic. The court then held that the USPTO had not met its burden of demonstrating that the mark BOOKING.COM as a whole was generic for hotel reservation services.
Although courts may consider the meanings of each constituent part of the mark – here “booking” and “.com” – the Fourth Circuit held that court also must consider evidence of how the public primarily perceives the mark as a whole.
The Fourth Circuit rejected the lower court’s position that “.com” alone has any source-identifying significance when added to a second-level domain (i.e., booking), instead focusing on the public perception of the mark as a whole – “booking.com.” The court also rejected the converse position of the USPTO that adding two generic terms like booking and .com together always results in a generic term.
The court noted that considering the primary significance of the mark as a whole apart from its components is particularly important for domain names, where “the relevant public may recognize domain names to indicate specific locations on the internet.” However, the unique meaning of a domain name as an internet location may cut against the owner’s ability to protect its mark: “Given that domain names are unique by nature and that the public may understand a domain name as indicating a single site, it may be more difficult for domain name plaintiffs to demonstrate a likelihood of confusion.”
Even a winning applicant to pay USPTO’s attorneys’ fees
In our prior article on this case, we also discussed the implications of a rejected trademark applicant’s choice between two options for challenging the USPTO’s decision: 1) appealing to the Federal Circuit Court of Appeals, where the parties are confined to the evidence of record before the USPTO, or 2) filing a new suit in federal district court, where the parties can present new evidence but the trademark applicant may be required to pay the USPTO’s expenses.
Here, Booking.com chose to file a new suit in district court. While the company benefited from the ability to present new evidence – particularly consumer survey evidence – it also was required to pay the USPTO’s expenses, including attorneys’ fees, regardless of the outcome of the matter.
In the recent decision, the Fourth Circuit upheld the requirement for Booking.com to pay more than $76,000 in expenses of the USPTO, including more than $51,000 in attorneys’ fees. In 2018, the Federal Circuit held that a similar provision of the patent law requiring the applicant to pay “all the expenses” of the USPTO did not include the USPTO’s attorneys’ fees. The Supreme Court is currently deciding whether to grant a petition for certiorari to hear that case. In the trademark context of the BOOKING.COM case, the Fourth Circuit upheld the payment of attorneys’ fees based upon current Fourth Circuit precedent.