United States Patent And Trademark Office v. Booking.Com B.v.

140 S.Ct. 2298 (2020)

Purchase the Printed Copy at bsmsphd.com

Nature of the Case

To access this section all you need to do is click here and register.

Facts

P is a digital travel company that provides hotel reservations and other services under the brand “Booking.com,” which is also the domain name of its website. P filed applications to register four marks in connection with travel-related services, each with different visual features but all containing the term “Booking.com.” D's examining attorney and D’s Trademark Trial and Appeal Board concluded that the term “Booking.com” is generic for the services at issue and is therefore unregistrable. D held that because booking is a generic term anything added to it to make a new or compound word would also be generic. D held that even if “Booking.com” is descriptive, not generic, it is unregistrable because it lacks secondary meaning. P appealed. The District Court concluded that “Booking.com”-unlike “booking”-is not generic. The “consuming public,” the court found, “primarily understands that BOOKING.COM does not refer to a genus, rather it is descriptive of services involving ‘booking’ available at that domain name.” The court held that this descriptive term has acquired secondary meaning as to hotel-reservation services. D appealed. The Court of Appeals for the Fourth Circuit affirmed. It rejected D’s contention that the combination of “.com” with a generic term like “booking” “is necessarily generic.” D appealed.