Thursday, September 07, 2017

E.D. Va. Reverses TTAB: BOOKING.COM Not Generic for Hotel Reservation and Travel Agency Services

In a Section 1071 review of the Board's decision in In re B.V., Serial No. 79114998 (February 18, 2016) [not precedential], the U.S. District Court for the Eastern District of Virginia reversed the Board's finding that the term BOOKING.COM is generic for travel agency and hotel reservation services. B.V. v. Matal, Civil Action No. 1:16-cv-425-LMB-IDD (E.D. Va. August 6, 2017).

On cross-motions for summary judgment, the district court ruled that TLDs are generally source-identifying, and that a mark composed of a generic SLD and a TLD "is usually a descriptive mark eligible for protection upon a showing of secondary meaning." The court found that plaintiff had demonstrated that BOOKING.COM has secondary meaning as to hotel reservation services, but not as to travel agency services. A Teflon-type survey conducted by Friend-of-the-Blog Hal Poret persuaded the court that BOOKING.COM is not generic for these services. Friend-of-the-Blog Jonathan Moskin of Foley & Lardner spearheaded plaintiff's successful challenge to the Board's ruling.

The court ordered the USPTO to register BOOKING.COM for the class 43 hotel reservations services, and remanded two applications to the Office for consideration of whether the design and color elements of those marks, in combination with the word mark, rendered those marks eligible for protection for the class 39 travel agency services.

Read comments and post your comment here.

TTABlog comment: The opinion includes a long discussion of the Board's treatment of domain names as marks.

Text Copyright John L. Welch 2017.


At 12:34 PM, Anonymous Anonymous said...

I tried to argue (unsuccessfully) back in the early dotcom days that adding a dotcom should make the mark registerable because adding the .COM with a generic word in my opinion does act as a distinctive source indicator. It may be kindof a moot point though. It is likely going to be a weak mark and if you own the generic second level domain name with .com no one is going to use that particular mark anyway since you would already likely own the domain name. Maybe it would help in instances of someone using the same second level domain with a .CC or CO. or something close to the generic term with a .com. It would also create issues if you registered the .com but didn't actually own the domain name.

At 4:28 PM, Blogger Paul Borovay said...

Really interesting case. Can the Board/Director appeal the decision to the Fourth Circuit?

At 2:21 PM, Blogger Paul Borovay said...

Hi there, just wondering if anyone knew the answer to my question above. Can the Director/USPTO appeal the decision to the Fourth Circuit?

At 2:55 PM, Blogger John L. Welch said...

I believe the answer is yes. The PTO may appeal an adverse decision of the courts. See, e.g., Matal v. Tam.


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