Support Skift’s Independent JournalismMake a Contribution Now
After getting its trademark applications rejected, a decision affirmed upon appeal, Booking.com has filed a lawsuit against the U.S. Patent and Trademark Office demanding that it approve Booking.com’s trademark.
The patent office initially published Booking.com’s trademark on October 13, 2012 and then reversed its own decision and withdrew the trademark about five weeks later.
Booking.com appealed the decision, which was based on the term supposedly being merely descriptive and too generic, with the Trademark Trial and Appeal Board on October 13, 2014.
The appeals board on February 18, 2016 upheld the patent office’s rejection of Booking.com’s trademark applications on the grounds “that BOOKING.COM is merely descriptive and Plaintiff had failed to prove the mark had acquired secondary meaning.”
Given that Booking.com filed the trademark application as a “travel agency service,” Booking.com’s lawsuit, filed April 15 in federal court in Alexandria, Virginia, states “there is no evidence in the entire history of Booking.com’s use of its trademark that any consumers or users of travel agency services refer to such sites as ‘Booking.com’s.'”
A Booking.com-commissioned survey found that 75 percent of its users “recognize BOOKING.COM as a trademark, not a common name,” the suit states.
Booking.com stated that it has invested enormous resources in advertising, for example, to spread its brand, which it has used since 2006. The Amsterdam-based Booking.com also stated that it has used the similar mark, Booking.NL, since 1997.
“There is no factual or logical basis on which to infer from a lengthy character string such as ‘instantworldbooking.com,’ that consumers ascribe to a small subset of the entire character string a primary meaning independent of that entire character string,” the lawsuit states.
Booking.com further chided the appeals panel for finding that BOOKING.COM had not become a distinctive brand among consumers. Booking.com’s lawsuit states that more than 2 million U.S. consumers signed up for its newsletter; it has more than 2.7 million Facebook “likes,” and almost “58,000 members of the relevant public were already ‘talking about’ Plaintiff’s brand on Facebook.com, higher than other accommodations and travel companies such as TRAVELOCITY, HOTELS.COM, TRAVELZOO AND ORBITZ.”
Booking.com demands that the U.S. Patent and Trademark Office publish the company’s trademark based on it being a travel agency service and having “acquired distinctiveness.”