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Keywords

appealtrialtrademark

trademark

Related Cases

Booking.com B.V. v. Matal, 278 F.Supp.3d 891

Facts

Booking.com B.V. filed a civil action against the USPTO challenging the denial of its trademark applications for the mark 'BOOKING.COM' for hotel reservation and travel agency services. The Trademark Trial and Appeal Board (TTAB) concluded that the mark was generic or merely descriptive and lacked acquired distinctiveness. The court reviewed the case de novo, considering both the TTAB's findings and new evidence presented by both parties. The court ultimately found that 'BOOKING.COM' had acquired secondary meaning for hotel services but not for travel agency services.

Issue

Whether the mark 'BOOKING.COM' is generic or merely descriptive and whether it has acquired distinctiveness for trademark protection.

Rule

Under the Lanham Act, a mark can be classified as generic, descriptive, suggestive, or arbitrary/fanciful. Generic marks cannot be protected as trademarks, while descriptive marks can only be protected if they have acquired distinctiveness. The primary significance of the mark in the minds of the consuming public is crucial in determining its classification.

Analysis

The court analyzed the components of 'BOOKING.COM', determining that 'booking' and 'dot-com' are both generic when considered separately. However, when combined, they form a descriptive mark that can be protected if it has acquired distinctiveness. The court found that the evidence, including consumer surveys, indicated that 'BOOKING.COM' had acquired secondary meaning specifically for hotel reservation services, but not for travel agency services.

Conclusion

The court ordered the USPTO to register the mark 'BOOKING.COM' for hotel reservation services but denied registration for travel agency services.

Who won?

Booking.com B.V. prevailed in part, as the court recognized the mark 'BOOKING.COM' as having acquired secondary meaning for hotel reservation services. The court's decision was based on the extensive evidence presented, including consumer surveys and advertising efforts that demonstrated public recognition of the mark as a source identifier for hotel services.

Booking.com B.V. prevailed in part, as the court recognized the mark 'BOOKING.COM' as having acquired secondary meaning for hotel reservation services.

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