Booking.com. B v. v. U.S. Patent & Trademark Office
915 F.3d 171
4th Cir.2019Background
- Booking.com (the company) applied to register BOOKING.COM for online hotel reservation services (Class 43); USPTO examiner and the TTAB refused registration as generic or, alternatively, descriptive without secondary meaning.
- Booking.com sued in district court under 15 U.S.C. § 1071(b), submitted new evidence including a Teflon consumer survey showing 74.8% of respondents viewed BOOKING.COM as a brand.
- The district court found "booking" generic but BOOKING.COM as a whole descriptive and that Booking.com had acquired secondary meaning for Class 43; it ordered registration for two marks and remanded two others.
- The USPTO moved to amend and to recover expenses under § 1071(b)(3); the district court denied amendment but awarded the USPTO expenses (including attorney salaries). Both parties appealed.
- On appeal the Fourth Circuit reviewed de novo whether BOOKING.COM is generic, held the PTO bears the burden to prove genericness in registration proceedings, and affirmed: BOOKING.COM is descriptive (protectable with secondary meaning) and the award of PTO expenses (per Shammas) stands.
Issues
| Issue | Plaintiff's Argument (Booking.com) | Defendant's Argument (USPTO) | Held |
|---|---|---|---|
| Is BOOKING.COM generic or descriptive for online hotel reservation services (Class 43)? | BOOKING.COM is descriptive (not generic); consumer survey shows primary significance is source (brand). | BOOKING.COM is generic: "booking" names the service, ".com" is generic for websites, and their combination is necessarily generic. | BOOKING.COM is descriptive, not generic; USPTO failed to meet its burden to prove genericness. |
| Who bears burden to prove genericness in registration proceedings? | Booking.com implies PTO must prove genericness. | PTO asserted the mark is generic (PTO traditionally bears burden). | The PTO bears the burden to prove a proposed mark is generic in registration proceedings. |
| Whether adding ".com" to a generic SLD (e.g., "booking") is per se generic / non-protectable? | Booking.com: a domain can acquire source significance; a ".com" composite may be non-generic based on public perception. | PTO: adding ".com" to a generic SLD can never yield a non-generic, protectable mark (analogy to "Company"). | Court declined a per se rule; adding ".com" can produce a non-generic mark in rare circumstances based on primary significance evidence. |
| Whether Booking.com must pay PTO's "expenses" (including attorney fees) under 15 U.S.C. § 1071(b)(3)? | Booking.com argued it should not have to pay PTO attorneys' salaries. | PTO sought recovery of expenses including prorated attorney/paralegal salaries. | Under Fourth Circuit precedent (Shammas), § 1071(b)(3) includes attorneys' fees; award of expenses affirmed. |
Key Cases Cited
- OBX-Stock, Inc. v. Bicast, Inc., 558 F.3d 334 (4th Cir. 2009) (describes trademark law's twin aims and distinctiveness spectrum)
- George & Co. v. Imagination Entm't Ltd., 575 F.3d 383 (4th Cir. 2009) (framework for categories of distinctiveness)
- Sara Lee Corp. v. Kayser-Roth Corp., 81 F.3d 455 (4th Cir. 1996) (definition of descriptive marks)
- Hunt Masters, Inc. v. Landry's Seafood Rest., Inc., 240 F.3d 251 (4th Cir. 2001) (distinguishes genericness inquiries and when surveys are relevant)
- In re Hotels.com, L.P., 573 F.3d 1300 (Fed. Cir. 2009) (domain-name marks: treating ".com" composites and relevance of consumer surveys)
- In re Cordua Rests., Inc., 823 F.3d 594 (Fed. Cir. 2016) (PTO bears the burden to prove genericness in registration proceedings)
- Shammas v. Focarino, 784 F.3d 219 (4th Cir. 2015) (held § 1071(b)(3) "all the expenses" includes attorneys' fees)
- Nantkwest, Inc. v. Iancu, 898 F.3d 1177 (Fed. Cir. 2018) (en banc) (later Federal Circuit decision rejecting Shammas reasoning about attorneys' fees under a related statute)
- Kellogg Co. v. Nat'l Biscuit Co., 305 U.S. 111 (U.S. 1938) (once a term is generic it cannot later become protectable)