Heads to the High Court

Dorsey & Whitney LLP

Dorsey & Whitney LLP

Last Friday, the U.S. Supreme Court granted the USPTO’s writ of certiorari to review traveling website company’s trademark application for “”. The TMCA previously covered developments in this case here and here.

Back in 2016, the USPTO rejected the company’s trademark application because the proposed mark “” was a generic term for the services offered, commenting that “booking” generically refers to “a reservation or arrangement to buy a travel ticket or stay in a hotel”.

The company appealed to federal district court in the Eastern District of Virginia, which reversed the USPTO’s rejection. The district court held that although “booking” was a generic term for the services identified, BOOKING.COM as a whole was nevertheless a descriptive mark. Further, the company submitted survey evidence demonstration that 74.8% of consumers recognized BOOKING.COM as a brand rather than a generic service.

The USPTO appealed to the 4th Circuit Court of Appeals, which affirmed the district court holding. The appellate court observed that “this case presents one such rare occasion where the record evidence supported a finding that the USPTO failed to meet its burden of proving that the public primarily understood BOOKING.COM to refer to the genus of online hotel reservation services, rather than the company or brand itself.” In other words, even though the terms “booking” and “.com”, were independently generic, the USPTO failed to rebut the evidence from the company showing that the combination had acquired secondary meaning. This USPTO then petitioned for Supreme Court review of the appellate ruling.

It is anticipated that by summer of 2020, the Supreme Court will provide the final say on this issue.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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