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Booking.com Trademark Protectable Despite Using Generic Term

Feb. 4, 2019, 9:21 PM

“Booking.com” is a valid trademark even if the word “booking” is a generic term, the Fourth Circuit ruled Feb. 4.

The appeals court said a generic term combined with ".com” can receive trademark protection if the public perceives it as a non-generic brand name.

A trademark examiner and the Trademark Trial and Appeal Board rejected Booking’s application to register “Booking.com,” finding that it was generic. The U.S. District Court for the Eastern District of Virginia disagreed, finding “Booking.com” descriptive as a whole with secondary meaning.

The district court granted the U.S. Patent and Trademark Office attorneys’ fees based on a Lanham Act provision that requires the appealing party to cover all costs if it appeals to a district court instead of the Federal Circuit. The USPTO appealed the protectability decision, and Booking appealed the grant of attorneys’ fees.

The Fourth Circuit found the mark protectable. It found that Booking proved the mark was descriptive and protectable by using consumer surveys in which most respondents identified Booking.com as a non-generic brand name.

The USPTO was also entitled to attorneys’ fees based on Fourth Circuit precedent, despite recent contrary Federal Circuit precedent.

Judge Allyson K. Duncan wrote the opinion, joined by Judge Robert B. King.

Judge James A. Wynn, Jr. dissented in part, arguing that combining a generic first level domain like ".com” with a secondary level domain like “booking” can only create a valid mark in “rare circumstances” where the meaning of the top level domain is subverted.

Wynn cited “tennis.net” for a tennis equipment company and “rom.com” for a website about romantic comedy movies as examples.

Foley & Lardner LLP represented Booking.

The case is Booking.com B.V. v. United States Patent & Trademark Office, 4th Cir., No. 17-2459, 2/4/19.

To contact the reporter on this story: Blake Brittain in Washington at bbrittain@bloomberglaw.com

To contact the editor responsible for this story: Jo-el J. Meyer at jmeyer@bloomberglaw.com

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