Booking.com B.V. v. Matal
278 F. Supp. 3d 891
E.D. Va.2017Background
- Booking.com B.V. applied to register BOOKING.COM (one word mark and three stylized marks) for services in Class 39 (travel/tour/transport reservations) and Class 43 (hotel & lodging reservation services). TTAB refused registration as generic, or alternatively descriptive without acquired distinctiveness.
- Plaintiff brought a § 1071(b) de novo civil action challenging the TTAB/USPTO refusals; both parties submitted the administrative record plus new evidence (notably plaintiff’s Teflon consumer survey and experts’ reports).
- The central legal questions: whether BOOKING.COM is generic or descriptive for the listed services, whether the ".com" top-level domain (TLD) has source‑identifying significance when combined with a generic second‑level term, and whether Booking.com has established acquired distinctiveness.
- The parties agreed the stylized elements were not determinative; the court analyzed the word mark BOOKING.COM and treated Classes 39 and 43 separately (multi‑class applications analyzed by class).
- Court found the word "booking" alone is generic for hotel and travel reservation services; but held that combining a generic SLD with the TLD ".com" generally produces a descriptive, potentially protectable mark (like Dial‑A‑Mattress reasoning), requiring proof of secondary meaning.
- Applying the Perini factors and the Teflon survey, the court held Booking.com established acquired distinctiveness for Class 43 (hotel reservation services) but not for Class 39 (broader travel/transport reservation services). Relief: grant registration for Class 43; deny for Class 39 and remand two stylized applications for further proceedings as to Class 43 design elements.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Is BOOKING.COM a generic term for the services in the applications? | BOOKING.COM is not generic; it functions as a brand. | BOOKING.COM is generic for online travel/hotel reservation services ("booking" + ".com" conveys the genus). | "Booking" alone is generic for the recited services, but BOOKING.COM is descriptive (not generic) when treated as a domain name. |
| Does the ".com" TLD add source‑identifying significance or is it functionally equivalent to corporate designators? | ".com" plus a generic SLD signals a unique domain name and can be source‑identifying (like a phone number + word). | ".com" adds no source significance; adding designators (e.g., Co.) or TLDs should not convert a generic term into protectable mark. | TLDs generally have source‑identifying value in combination with an SLD; a generic SLD + ".com" is generally descriptive and eligible for protection upon secondary meaning. |
| Has Booking.com proven acquired distinctiveness (secondary meaning) for the claimed services? | Yes: extensive U.S. advertising impressions, large sales/transaction volume, unsolicited media coverage, social‑media following, and a Teflon survey showing ~75% recognize BOOKING.COM as a brand. | No: evidence is insufficient or not class‑specific; methodological critiques of the survey and argument that evidence does not show source recognition for all claimed services. | Booking.com proved secondary meaning for Class 43 (hotel reservation services) but failed to prove it for Class 39 (broader travel/transport reservation services). |
| Remedy and scope of registration | Register BOOKING.COM for all claimed classes and styles. | Deny registration; TTAB decision should be upheld at least in part. | Court orders registration of BOOKING.COM for Class 43 services (word mark and certain design marks remanded for Class 43 consideration); registration denied for Class 39. |
Key Cases Cited
- Kellogg Co. v. Nat’l Biscuit Co., 305 U.S. 111 (establishes the "primary significance" test for genericness under trademark law)
- Park ’N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189 (explains trademark policy to secure goodwill and prevent consumer confusion)
- Qualitex Co. v. Jacobson Prod. Co., 514 U.S. 159 (describes the purposes of trademark protection)
- Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (inherently distinctive marks and protection discussion)
- In re Dial‑A‑Mattress Operating Corp., 240 F.3d 1341 (Fed. Cir.) (telephone number + generic term can create descriptive, protectable mark requiring secondary meaning)
- In re Hotels.com, L.P., 573 F.3d 1300 (Fed. Cir.) (TTAB and Federal Circuit treatment of genericness for domain‑name marks)
- In re 1800Mattress.com IP, LLC, 586 F.3d 1359 (Fed. Cir.) (treatment of a domain name composed of a generic SLD and ".com")
- Swatch AG v. Beehive Wholesale, LLC, 739 F.3d 150 (4th Cir.) (§1071(b) de novo standard and district court acts as factfinder)