Priceline Throws A Fit And Sues USPTO For Not Granting Them Booking.com Trademark

from the generically-speaking dept

The Priceline Group has something of a history with intellectual property. Several years back, Jay Walker, Priceline’s founder, appeared to have transitioned to becoming a full-blown patent troll. In the year’s since, the company he once founded has been in something of a tussle with the USPTO over its attempt to register a trademark for “booking.com.” The USPTO had initially approved of the mark, before reversing its own decision only weeks later due to “booking.com” being essentially descriptive. The Priceline Group appealed, but the appeals board upheld the rejection of the mark, affirming it as being descriptive.

You might have thought that this would be the end of the story. It’s not. Priceline Group has now sued the USPTO over its rejection.

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.

The commissioned survey, as you’d expect, concludes exactly what Priceline Group wants it to conclude. Still, that doesn’t particularly change the nature or reasoning behind the USPTO’s rejection. If I want to go about booking a hotel, “booking.com” is descriptive of the service that is being offered at the site. I’m struggling to see exactly what the argument from Priceline Group actually is here, because this one seems fairly easy to grasp.

The crux of this flailing by the company appears to be how much money its invested in transitioning its brand from Priceline to Booking.com.

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. 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.”

Much of which appears to demonstrate just how little the company relies on “booking.com” being a registered trademark in the first place. After all, it appears to be doing quite well in terms of reputation and traffic. And still none of this translates into an argument that the term “booking” isn’t descriptive. I’m not sure why the company is spending so much time in the courts with this lawsuit rather than simply continuing the rack up the fees its business is generating.

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Companies: booking.com, priceline

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Comments on “Priceline Throws A Fit And Sues USPTO For Not Granting Them Booking.com Trademark”

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26 Comments
Anonymous Coward says:

“Booking.com” seems like a perfectly valid trademark to me. It’s distinctive, it’s not easily confused with other marks, it’s used to identify the booking.com website consistently in all their marketing materials. Anyone else using the term “booking.com”, especially to refer to a website or travel related service would generate enormous confusion. It’s just about the strongest example of a mark you can give.

This is, of course, entirely separate from trademarking “booking”, which is is obviously generic. Notice how in their protest, which you go so far as to quote, they note other travel related trademarks: Travelocity, hotels.com (note the added .com which takes the generic “hotels” and makes it a trademark), Travelzoo, and Orbitz.

GMacGuffin (profile) says:

Re: Re:

This is, of course, entirely separate from trademarking “booking”, which is is obviously generic.

Booking.com also tries to skirt the very big issue that TLDs like “.com” are not considered in trademark analysis. The determination is made on “Booking” which at best is descriptive, if not generic when referring to a travel booking site.

Booking.com’s claim that nobody refers to travel sites as “booking.com’s” [sic, why apostrophe?] is a disingenuous attempt to draw attention away from the fact that “Booking” is the mark that is being reviewed for distinctiveness. They certainly know that; so does the USPTO.

nasch (profile) says:

Re: Re: Re:

Booking.com also tries to skirt the very big issue that TLDs like “.com” are not considered in trademark analysis. The determination is made on “Booking” which at best is descriptive, if not generic when referring to a travel booking site.

This really should have been described and cited in the article. Tim made absolutely no mention of this fact and it’s critically important in evaluating the claim.

Unanimous Cow Herd says:

Re: Re:

Have to agree with you, here. Booking.com could be considered a trademark, but is very close to the “descriptive” line. Given the applicant’s history of trolling, however, I think the PTO ruled correctly. Granting a trademark on this would open the doors for this guy to bully anyone and everyone who would try to use the descriptive “booking” (such as MyAssIsBooking.com, or maybe policebooking.com as imaginary examples) to prevent competition or extort “damages” based on dilution or whatever else they can dream up.

HegemonicDistortion says:

Re: Re:

Exactly. So the question, it seems to not-a-lawyer me, is whether the addition of .com can be considered transformative* in some way, making the merely descriptive “booking” into something more. Further complicating the question is that “.com” applies to millions of websites as a top-level domain, and that booking.com (the company) has no ownership claim or “IP” rights in whatsoever. It can reasonably be said booking.com (the domain name) isn’t even something that the company owns in the usual sense, i.e. outright and in perpetuity, since they have to renew it periodically, and failure to do so means someone else can acquire it.

*in the common sense of the word, not the particular sense pertaining to fair use/copyright considerations

Mason Wheeler (profile) says:

If I want to go about booking a hotel, “booking.com” is descriptive of the service that is being offered at the site.

No, if you want to book a hotel, “booking” is descriptive of the service being offered. This is one case where “adding ‘on a computer'”, as it were, actually does make a fundamental difference. “Booking” is an action; “booking.com” is a specific tool to perform that action.

Having said that, if I want to go about booking a hotel, I generally just use Orbitz. 😛

DB (profile) says:

Are people still using the count of Twitter followers and Facebook “likes” as indicating anything useful?

You can buy twitter “followers” for trivial amounts of money. Giving away a trinket or discount for a “like” will get millions of results.

If a company is using this as a claim for name recognition, their other claims must be really weak. Or they are counting on the judge to be old and clueless. (Even if they are, law clerks should be whispering into their hearing aid.)

David says:

Re: Re: They need this trademark

Sorry, I didn’t think I needed to add /snark.

I do think this is about as stupid and ridiculous as it comes. Some years back, I saw a billboard “Firestone Tires Are Great ™” and I thought WTF?? Do they really think Goodyear is going to steal that? The whole trademark madness is completely out of control. Every inane utterance is trademarked these days. Otherwise sensible people have gone deep into the stupid.

nasch (profile) says:

Re: Re: Re: They need this trademark

Sorry, I didn’t think I needed to add /snark.

My apologies. There are people who are really that dumb, and I didn’t know if you were one of them.

Some years back, I saw a billboard “Firestone Tires Are Great ™” and I thought WTF?? Do they really think Goodyear is going to steal that?

I wonder if they didn’t put much thought into it, and just automatically trademarked everything possible.

Paul Alan Levy (profile) says:

Getting a trademark in a domain name

What is so pernicious about this lawsuit is that it is an attempt to take a generic term like “booking,” trying to register a mark based on the theory that adding the DOT COM makes it anything more than a domain name based on a generic second-level domain. The hope, of course, is to use the registration block NON-domain name uses of the generic term, as well as domain names that include the generic term.

An interesting aspect of the complaint is that it recites a bunch of dictionary definitions (grafs 63 to 67) without ever acknowledging that a common meaning of “booking” is, making a reservation.

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