Booking.com B.V. is a digital travel firm that arranges hotel reservations and other services under the "Booking.com" brand, which is also the website's domain name. Booking.com applied to the US Patent and Trademark Office to register four marks in connection with travel-related services, each having its own visual elements but all incorporating the phrase "Booking.com."
Question: "Does the addition by an online business of a generic top-level domain (".com") to an otherwise generic term create a protectable trademark, notwithstanding the Lanham Act's prohibition on generic terms as trademarks?"
Judgment
The USPTO examining attorney and the Trademark Trial and Appeal Board (TTAB) refused to register the mark as according to them the word "Booking.com" is generic for the services in question. The TTAB pointed out that "booking" refers to making travel arrangements, and ".com" refers to a commercial website. Customers would perceive the term BOOKING.COM principally to relate to an online reservation service for travel, tours, and hotels," the TTAB said. In the alternative, the TTAB found that "Booking.com" is unregistrable because it lacks secondary meaning, even though it is descriptive rather than generic.
Booking.com filed a petition for judicial review in the United States District Court for the Eastern District of Virginia. The district court ruled that "Booking.com," unlike "booking," is not generic, based in part on Booking.com's evidence of consumer perception. The "consuming public" "mainly understands that BOOKING.COM does not refer to a genus, rather it is descriptive of services involving 'booking' available at that domain name," the district court decided. The court ruled that "Booking.com" has gained secondary meaning in the context of hotel-reservation services after determining that the name is descriptive. The Respondent's marks meet the distinctiveness criteria for registration for those services.
In the appeal made to the Circuit court by USPTO, the court affirming the district court's decision held that the mark is not generic. USPTO file the present appeal. It argued that "generic.com" means that a particular generic product or service is available online and nothing else. The court disagreeing to the view observed that a "generic.com" term helps consumers identify with source of a particular website. The court refused to support any of the Plaintiff's view in trade mark law or policy. It declined to adopt the rule which excluded the registration of "generic.com" marks.
The court held that because the lower court decided that "BOOKING.COM" does not indicate a class of online hotel-reservation services, it is not a generic term and so is eligible for federal trademark protection. The combination of consumer survey evidence and "sources such as 'dictionaries, usage by consumers and competitors, and any other source of evidence bearing on how consumers perceive a term's meaning' may also inform whether a mark is generic or descriptive," said Justice Sotomayor in her short concurring opinion.
Justice Stephen Breyer wrote the dissenting opinion, arguing that Booking.com's corporate name tells them only what they need to know about the company. As a result, adding ".com" to an otherwise generic term, such as "booking," should not result in a trademark registration, as it would be contrary to trademark principles and sound trademark policy.
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