Booking.com B.V.

Trademark Trial and Appeal Board

Nov 16, 2017

No. 79122365 (T.T.A.B. Nov. 16, 2017)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
November 16, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Booking.com B.V.
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Serial No. 79122365
Serial No. 79122366
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ORDER OF REMAND
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Jonathan E. Moskin and Katherine Califa of Foley & Lardner LLP
for Booking.com B.V.

Caitlin Watts-Fitzgerald, Trademark Examining Attorney, Law Office 111
(Robert L. Lorenzo, Managing Attorney).
_____

Before Shaw, Adlin and Masiello, Administrative Trademark Judges.
By the Board:

Booking.com B.V. (“Applicant”) filed two applications for extension of protection
to the United States of two International Registrations for the marks shown below:
U.S. Serial No. 79122365:

Serial Nos. 79122365 and 79122366

2

U.S. Serial No. 79122366:

The services identified in the two applications are the same and are in Class 43.
In each case, the Examining Attorney refused the requested extension of
protection on the ground that the mark is generic as applied to the services; and on
the alternative ground that the mark is merely descriptive of Applicant’s services,
under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), and that
Applicant’s showing of acquired distinctiveness under Section 2(f), 15 U.S.C.
§ 1052(f), was insufficient. In each case, we affirmed the Examining Attorney’s
refusal on both grounds. (25 TTABVUE).
Applicant sought review of our decision under Trademark Act § 21(b), 15 U.S.C. §
1071(b), by way of a civil action in the United States District Court for the Eastern
District of Virginia, Booking.com B.V. v. Matal, No. 1:16-cv-425. On cross-motions
for summary judgment, the Court issued a decision holding that the word mark
BOOKING.COM is a descriptive mark eligible for registration upon a showing of
secondary meaning, and that Applicant had “carried its burden of demonstrating
the mark’s secondary meaning as to the hotel reservation services described in
Class 43 ….”1
In its Amended Judgment Order, the Court remanded both applications to the
USPTO for further administrative proceedings “to determine whether the design

1 Booking.com B.V. v. Matal, No. 1:16-cv-425, 2017 U.S. Dist. LEXIS 126320 (E.D. Va. Aug.
9, 2017).
Serial Nos. 79122365 and 79122366

3

and color elements in those two applications, in combination with the protectable
word mark, are eligible for protection as to the Class 43 services.”2
The applications are REMANDED to the Examining Attorney to determine, in
light of the Court’s finding that the wording BOOKING.COM is registrable under
Section 2(f), whether the two marks as a whole are registrable.3 Further action by
the Examining Attorney should be consistent with the Court’s judgment and in
accordance with USPTO procedures.

2 Booking.com B.V. v. Matal, No. 1:16-cv-425 (E.D. Va. Oct. 26, 2017) (ECF No. 112)
(amended order) at 1.
3 Normally, the Board would wait to act on a court order in a § 21(b) civil action until after
the period to appeal the district court’s judgment expires or, if an appeal is taken, until
after the appeal and any remands are decided. However, the amended judgment
Memorandum Opinion makes clear that the Office may not suspend proceedings here
unless and until a notice of appeal is filed. Booking.com B.V. v. Matal, No. 1:16-cv-425 (E.D.
Va. Oct. 26, 2017) (ECF No. 110) (mem. op.).