On November 8, 2019 the U.S. Supreme Court granted the U.S. Patent And Trademark Office’s Petition for Writ of Certiorari for review of the 4th Circuit Court of Appeals’ decision affirming the district court’s order directing the USPTO to allow federal registration of “BOOKING.COM” as a trademark.
The case concerns whether the term is “generic” (and thus incapable of serving as a trademark) or “descriptive,” which means that it is capable of serving as a trademark and registrable, upon proof of “secondary meaning” that the term functions in the minds of consumers as a unique source of goods or services.
“BOOKING.COM” is used by the Respondent (Booking.com B.V.) to promote its online hotel reservation services. It obtained an international registration of Booking.com in 2011 and in June of 2012 filed an application with the USPTO seeking to obtain registration of the mark in the U.S.
The USPTO’s examining attorney refused to allow the mark to be registered on the grounds that the term was generic as applied to the relevant services.
The applicant appealed this decision to the Trademark Trial and Appeal Board (“TTAB”) which affirmed the refusal to register the term. It focused on the inadequacy of the applicant’s evidence in support of acquired distinctiveness, finding it “sparse and equivocal” and inadequate to establish that the term acted as a source identifier in the minds of the relevant public.
Booking.com BV appealed the TTAB’s decision to the U.S. District Court for the Eastern District of Virginia. The...
