In 2012, Booking.com B.V. (“Booking.com”) filed four trademark applications for the mark Booking.com for services in class 39 – travel agency services – and class 43 – making hotel reservations. The USPTO initially rejected all four applications on the ground that BOOKING.COM is generic as applied to the relevant services and, in the alternative, that the mark is merely descriptive and that Plaintiff had failed to establish acquired distinctiveness. The Trademark Trial and Appeal Board (TTAB) then affirmed the four refusals of registration for the same reasons. Booking.com filed this civil action challenging the denial by TTAB.
In determining whether the mark is generic, the Court considered the two elements “booking” and “.com” separately before considering them in combination. Since “booking” is a common component of descriptors for hotel reservations and travel agency services and Plaintiff used the word “booking” routinely as a noun and a verb to describe reservation services on their website, “booking” was found to be generic for the classes and services recited in Plaintiff’s applications.
Then, the Court looked to see whether the term created from the combination of “booking” and “.com” remained generic. The Court reviewed Federal Circuit case law as persuasive authority, but noted the Federal Circuit review of TTAB decisions is of a more deferential standard than the de novo review in this case and thus viewed the issue regarding top-level domains (TLDs) as one of first impression.
The Court found that while a TLD has no source identifying significance by itself, when in combination with a second-level domain (SLD), it indicates a domain name, which is unique. The combination of a TLD with a generic SLD actually creates a descriptive mark by indicating that services relating to the generic SLD are available by accessing the domain name. But whether such a descriptive mark is entitled to trademark protection will depend on whether the mark holder can establish acquired distinctiveness, which is that “the primary significance of the mark in the minds of the relevant consumers is the producer” instead of the product or services.
In reviewing whether the Lanham Act purposes militate for or against protection, the Court determined that since domain names are inherently unique and the scope of protection afforded to a domain name with a generic SLD will be narrow, the risk of consumer confusion or anticompetitive monopolies is remote. In fact, granting trademarks to producers who primarily offer goods and services online and brand themselves based on their domain name favors the interest of consumers and protects the good will generated by producers and incentivizes brand development. Therefore, a mark composed of a generic SLD and a TLD is a descriptive mark that may be eligible for protection if the owner can show acquired distinctiveness.
Finally, the Court determined whether the mark has acquired distinctiveness by considering six factors: (1) advertising expenditures; (2) consumer studies linking the mark to a source; (3) sales success; (4) unsolicited media coverage of the product; (5) attempts to plagiarize the mark; and (6) the length and exclusivity of the mark’s use. After reviewing the evidence for all six factors, the Court found that there was a total absence of evidence regarding secondary meaning for Class 39, travel agency services, so Booking.com failed to carry its burden of establishing secondary meaning for those services. The opposite applied for Class 43, where the Court found that the record shows strong evidence of secondary meaning and therefore the mark is entitled to protection as a descriptive mark for those services.
Therefore, the Court concluded that a TLD generally has source describing significance and that a mark composed of generic SLD and a TLD is usually a descriptive mark eligible for protection upon a showing of secondary meaning. In applying this decision to this case, the Could held that BOOKING.COM is a descriptive mark and Plaintiff carried its burden of showing secondary meaning with regards to the services in Class 43, but not Class 39. The Court then issued an order to the USPTO to register BOOKING.COM as to the Class 43 services. As a result of this decision, more domain names comprised of a generic SLD and TLD may possibly be registered if the applicant can show acquired distinctiveness.