A divided federal appeals court on Monday said the Booking.com travel website could trademark the Booking.com name, rejecting the U.S. Patent and Trademark Office’s (PTO) contention that the name was too generic.
In a 2-1 decision, the 4th U.S. Circuit Court of Appeals in Richmond, Virginia said adding “.com” to a generic word such as “booking” could in “rare circumstances” create a protectable, non-generic composite when the composite’s primary significance to the public is the source, not the product being offered.
Link to the rest at Reuters
From The National Law Review:
A generic trademark or brand name is one that—due to its popularity or common usage—has become synonymous with a general class of products or services. Famous trademark-turned- generic product names include Thermos and Velcro.
Under U.S. trademark law, generic trademarks can never be federally registered and protected under the Lanham Act (the Trademark Act of 1946) because the mark name refers directly to the class of a product or service it belongs to and is incapable of distinguishing that good or service from other goods or services on the market. Generic names must remain in the public domain, free for the public to use. Moving up the trademark scale of distinguishable marks, descriptive trademarks can be protected from public use if an applicant can show that they have acquired distinctiveness.
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On appeal to the Eastern District of Virginia, the court’s first step was to determine if “booking” was generic. The court used the applicable test for genericness and (1) identified the class of product or service to which use of the mark is relevant; (2) identified the relevant purchasing public of the class or service; and (3) determined whether the primary significance of the mark to the relevant public was to identify the class of product or service to which booking.com related. As listed in plaintiff’s trademark registration application, the class of product or service for use of the booking.com mark was travel and tour ticket reservation services and making hotel reservations for others. Because the application sought registration for in-person and online travel, tour, and hotel registration services, customers who used travel, tour, and hotel reservation services in-person or online were the relevant purchasing public. The third prong examined whether the primary significance of the term in the consuming public’s mind was not the product but the producer. The court considered “booking” and “.com” separately before considering them in combination.
Analyzing “booking” alone, defendants established through sufficient evidence—dictionary definitions of booking, plaintiff and its competitors’ use of the term in the manner of making a reservation, and public use of the term—that “booking” by itself was the common descriptive name for both the act of making a reservation and the reservation itself.
When the court considered “booking” and “.com” as a whole, plaintiff argued that the combination of “booking” and “.com” signaled a domain name, part of an electronic address on the Internet that was uniquely capable of indicating the source of a product or service. Defendants countered that “.com” merely denoted services offered via the Internet, pointing to other Federal Circuit cases where a top-level domain (“TLD”) term like “.com” had no source-identifying significance.
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The court found that when combined with a second-level domain (“SLD”), TLDs generally have source-identifying significance, and the SLD + TLD combination is generally a descriptive mark that is protectable upon a showing of acquired distinctiveness. They based this reasoning on that fact that a top-level domain plus a second-level domain equals a domain name, which, like a telephone number, is unique. Contrary to defendant’s argument, adding a TLD such as “.com” to a generic SLD does more than indicate that a company offers services via the internet; it indicates a unique domain name that can only be owned by one entity.
Link to the rest at The National Law Review