On February 18, 2016, in a non-precedential opinion, the TTAB upheld a refusal to register BOOKING.COM finding the mark to be generic relative to the covered services, namely, holiday and hotel reservation services.
Booking.com B.V. filed two applications to extend protection to the U.S. for international registrations for the following two marks:
The services identified by these applications related generally to holiday and hotel reservation services. The Examining Attorney refused both applications on the ground that the marks were generic or, in the alternative, merely descriptive of the covered services. Booking.com appealed.
The TTAB applied a two-step inquiry to determine the marks’ primary significance to the relevant public, namely: (1) what is the genus of goods or services at issue; and (2) is the term sought to be registered understood by the relevant public primarily to refer to that genus of goods or services? Booking.com argued that the relevant genus was “travel agency services.” The Board disagreed, noting that each application’s recitation of services was not so broad and did not use the words “travel agency services,” or even refer to making arrangements for transportation. Further, dictionary definitions of “travel agent/travel agency” refer to arranging transportation. Accordingly, the Board defined the relevant genus more narrowly as “hotel room reservation services and other lodging reservation services, with related information, advice and consultancy, including such services provided online.”
The Board agreed with the Examining Attorney that, with respect to the relevant public:
Each of the terms BOOKING and .COM has a clear and readily understood meaning and the combined term communicates just as clearly and directly that Applicant operates a commercial website that provides its customers with booking information and reservation booking services.
The Board pointed to several factors supporting this conclusion. First, dictionary definitions show that an accepted meaning of “booking” is a reservation for a room in a hotel. Second, numerous websites use the term “booking” to describe Booking.com’s services and similar online services of others; even Booking.com’s own website advertises: “Easily manage all your bookings.” Third, the Examining Attorney provided examples of at least twenty-one other similar websites whose domain names included “booking.com,” “bookings.com,” or various combinations of the words “booking” or “book” and “.com” (e.g., “hotelbooking.com,” “drakehotelbookings.com,” & “bookingbuddy.com”).
According to the Board, Booking.com’s evidence of the public’s understanding was largely irrelevant. Booking.com had submitted: (1) a press release by J.D. Power & Associates relating to its rankings of independent travel websites based on a consumer survey that showed Booking.com ranked highest in overall satisfaction among independent travel websites; and (2) a declaration by its Director stating that Booking.com had won various awards and setting forth information about Booking.com’s business (countries served, monthly U.S. visitors to the website, U.S.-based subscribers to newsletters, social media followers, etc.). The Board found that though this evidence related to Booking.com’s business success, it said little or nothing about what customers understand BOOKING.COM to mean.
Also unconvincing was Booking.com’s argument that a domain name cannot identify an entire genus of services because “a specific URL can identify only one entity.” As the Board noted, not only does a URL refer to only one specific internet address, which may be owned many registrants, but this argument also ignores the numerous third-party uses of “booking.com.”
Finally, the Board found the design elements of the marks so conventional that customers would not recognize the color or style of lettering as an indicator of source, and none of Booking.com’s evidence of acquired distinctiveness focused on these elements. Noting that its finding could be reversed on appeal, the Board also affirmed the descriptiveness refusal in the alternative.
The case is In re Booking.com B.V., Ser. Nos. 79122365, 79122366 (TTAB Feb. 18, 2016).
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