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Paul Zimmerman
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UPDATE: The Priceline Negotiator Fails: BOOKING.COM Is Rejected As A Trademark

Update:

Booking.com B.V. (BBV) has now initiated an action to overturn the Trademark Trial and Appeal Board’s (TTAB’s) determination that “Booking.com” is a generic term for the travel agency services it would be used for. While the TTAB found that the term “Booking.com” would obviously and immediately be understood as having the meaning of booking travel, tours, and lodgings through an internet service, BBV has responded in its recent filing that “there is no basis in law, logic or linguistics for the TTAB’s speculation.” BBV argues that the word “booking” itself has many meanings that are not connected to travel services. BBV further accuses the TTAB of relying on “new theories of human cognition and understanding” to reach its decision rejecting the trademark application. M&R will stay abreast of developments in this lawsuit and share updates as appropriate.

Originally Published February 25, 2016:

A Priceline.com LLC-owned company, Booking.com B.V. (“BBV”), sought to register with the United States Patent and Trademark Office (“USPTO”), the term BOOKING.COM as a trademark in multiple iterations (as a word mark and as multiple design forms).

In considering BBV’s trademark application, a USPTO examining attorney concluded that the BOOKING.COM term was “generic” in the context of BBV’s business, and therefore unfit for registration. BBV thereafter appealed the decision to the Trademark Trial and Appeal Board (“TTAB” or “Board”), which last week, affirmed the examining attorney’s ruling (In re Booking.com B.V., Serial No. 79114998) (February 18, 2016).

Generic terms are often common words that identify products or services that are not specific to any particular source (i.e., a manufacturer, designer, etc.). For example, the term APPLE generically describes a type of fruit. As such, an apple farmer could not successfully register APPLE as a trademark to describe its farmed apple products – the public could not necessarily associate all farmed apples to that one specific farmer because numerous other farmers likewise sell apples. Therefore, the term APPLE in that context would be generic, and thus an unreliable indicator of the origin of that farmer’s apples sold in the marketplace. However, in contrast, the term APPLE is registerable as a trademark to describe a computer company’s products, because the term is not generic in the context of that computer industry (i.e., apples have no apparent connection to computers, and thus a product branded as APPLE is a reliable indicator of its origin to consumers).

Here, the Board agreed with the USPTO examining attorney that the term BOOKING.COM was generic in the context of the very services offered by BBV. Evidence presented to the TTAB established that BBV’s primary services were in the nature of travel arrangements and hotel registration, specifically in light of its online reservation platform. The TTAB further concluded that term “booking” denoted “a reservation or arrangement to buy a travel ticket or stay in a hotel room; or the act of reserving such travel or accommodation.” The fact that BBV utilized the term “booking” throughout its website to describe its services did not help its case.

Ultimately, the TTAB concluded that the BOOKING.COM term was too generic in the context of BBV’s travel agency and hotel registration services. As a result, it affirmed the examining attorney’s ruling to reject the application thereby preventing BBV from registering the BOOKING.COM term as a trademark. This ruling is consistent with a prior 2008 TTAB ruling concluding that the term HOTELS.COM was too generic in the context of the applicant’s services of booking temporary lodging accommodations for online customers (In re Hotels.com, Serial No. 78277681) (March 2008).

The TTAB’s ruling is significant in that it preserves for other players in the hospitality industry the ability to freely utilize the term “booking” without fear that such use might infringe on another’s trademark. While BBV certainly has claim over the www.booking.com website, it cannot, for the time being, claim ownership over a BOOKING.COM trademark. It remains to be seen whether BBV will appeal the TTAB ruling to federal district court.

This article is not offered as, and should not be relied on as, legal advice. You should consult an attorney for advice in specific situations.