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.'”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.
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 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.