In a 39-page opinion, the Board affirmed a refusal to register BOOKING.COM, in standard character form, finding the term to be generic for travel agency and hotel reservation services. In separate decisions, the Board also affirmed genericness refusals in three closely-related cases involving the same term in design form (including the one shown below). The Board also considered the USPTO's alternative refusal on the ground of mere descriptiveness under Section 2(e)(1), finding Applicant's Section 2(f) claim of acquired distinctiveness unsupported by sufficient proofs for this "very highly descriptive" term. In re Booking.com B.V., Serial No. 79114998 (February 18, 2016) [not precedential].
The Board found the genus of the services to be "travel agency and tourist agency services ..." and "making hotel reservations and resort information ..." (see page 4). The relevant public includes all persons interested in making reservations for travel or lodging, and all persons interested in obtaining information or advice about same. The USPTO's evidence focused on applicant's online reservation services, an approach which was proper, since a refusal may be based on any one of the services for which registration is sought.
The examining attorney submitted dictionary definitions of "booking" (e.g., "an arrangement to buy a travel ticket, stay in a hotel, etc. at a later date") and of ".com", and Internet website excerpts using the term "booking" to describe the services as offered by applicant and others. Applicant's website used the word "booking" both as a noun meaning a hotel reservation and a verb meaning to make such a reservations.
The evidence also included third party domain names and trade names incorporation the term "booking.com": e.g., ebooking.com, hotelbooking.com, eurobookings.com, Bookingbuddy.com.
From the evidence, the Board found it clear that:
an accepted meaning of “booking” is a reservation or arrangement to buy a travel ticket or stay in a hotel room; or the act of reserving such travel or accommodation. It is also clear from the Internet evidence that the term “booking” has been widely used to describe the service of arranging reservations for hotel rooms or air travel, as described in Applicant’s recitation of services and as comprehended by the applicable genera of services. (p. 20-21)
Applicant argued that the dictionary definitions show that the primary meaning of "booking" relates not to travel but to theater reservations. The Board, however, pointed out that the term must be considered in the relevant context of travel, regardless of its meaning in other contexts.
The Board deemed it proper for the examining attorney to consider "booking" and ".com" separately for genericness; that approach was approved by the CAFC in the LAWYER.COM and MATTRESS.COM cases. "The fact that 'booking' and '.com' appear in dictionaries separately, but not together, does not mean that their combination cannot be generic." (p.24). Moreover, the Board pointed out that it is not necessary that the public actually use a term to designate the genus, but only that the public understand the term to refer to the genus. See Marvin Ginn, 92 USPQ2d at 1685.
At to public perception of the term, applicant submitted a press release regarding a 2012 J.D. Power survey of customer satisfaction, but the Board found this evidence to be "at best a very indirect demonstration of what relevant customers understand 'booking.com' to mean." (p.27). The survey may indicated something about applicant's business success, but it says nothing about customers' understanding of the meaning of BOOKING.COM.
Applicant contended that it is impossible for BOOKING.COM to identify an entire class or genus of services because "a specific URL can identify only one entity." The Board noted, however, that a URL points to a specific address, not a specific entity, and the owner of the URL may change. In addition, applicant's argument ignored the use of "booking.com" by third parties in their Internet addresses.
Finally, the Board distinguished this case from In re Steelbuilding, in which the CAFC reversed a genericness refusal of STEELBUILDING.COM for both retail sale of steel buildings and the design and construction of same, because consumers would appreciate the dual meaning of the term: i.e., a building made of steel and the process of designing and constructing a structure with steel. Consumers would find no such double meaning in BOOKING.COM.
For the sake of completeness, the Board considered applicant's Section 2(f) claim. The USPTO's evidence demonstrated that BOOKING.COM is "very highly descriptive and would require significant evidence of acquired distinctiveness in order to allow registration of the mark." (p.35).
The Board found no evidence that would support a finding of acquired distinctiveness for applicant's lodging reservation services (class 39). As to the travel services (class 43), the evidence consisted of the Power survey information and a declaration regarding website visits, advertising, and revenues.
However, the USPTO's evidence of third-party use of "booking.com" in their trade names and domain names "seriously undercuts applicant's claim to have made 'substantially exclusive' use of the term, as well as applicant's claim of acquired distinctiveness." (p.37).
The Board found applicant's evidence inadequate to prove acquired distinctiveness, "especially because it does not focus on demonstrating actual market recognition of BOOKING.COM as a source indicator." (p. 38). "Overall, we find Applicant's evidence to be too sparse and equivocal to indicate that a term as highly descriptive as BOOKING.COM has acquired distinctiveness under Section 2(f)." (p. 39).
And so the Board affirmed the genericness refusal and the alternative Section 2(e)(1) mere descriptiveness refusal.
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TTABlog comment: In one of the four related cases, the Board affirmed the refusals, but allowed registration with a disclaimer of BOOKING.COM for the following mark:
Text Copyright John L. Welch 2016.