The Fourth Circuit Finds "" Mark Protectable

Wednesday, February 6, 2019

The U.S. Court of Appeals for the Fourth Circuit has upheld a district court’s summary judgment ruling that the mark BOOKING.COM as applied to “online hotel reservation services” is a protectable service mark that should not have been denied registration by the U.S. Patent & Trademark Office (USPTO).  The appeal stemmed from the USPTO’s refusal to grant the registration on the ground that the BOOKING.COM mark is “generic” as applied to online hotel reservation services.  The district court, and ultimately the Fourth Circuit, disagreed, finding that BOOKING.COM “as a whole” was not generic for two principal reasons.  First, the Fourth Circuit found that that the word “booking” could be used to describe a plethora of reservation services other than hotel reservations, including reservations for theatrical or musical engagements.  Second, the Fourth Circuit gave great weight to B.V.’s survey evidence indicating that almost 75% of consumers recognized BOOKING.COM as a brand rather than a generic service.  In a sharply worded dissent, Circuit Judge Wynn argued that generic terms cannot be trademarked, irrespective of evidence relating to advertising, repeated use, and consumer association. B.V. v. U.S. Patent & Trademark Office, No. 17-2458, 17-2459, 2019 WL 419053 (4th Cir. Feb. 4, 2019).