Many online businesses prefer to use domain names that communicate as clearly and concisely as possible the types of goods and services offered on their websites. That may be good marketing strategy. But as a recent decision of the Trademark Trial and Appeal Board demonstrates, TTAB Decision, it can be very risky in terms of obtaining trademark registration protection for the primary brand identity of a website.
The case involved the BOOKING.COM mark in two design formats, used by Booking.com BV for a popular website for hotel reservations and holiday accommodations:
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When the company sought an extension of international registration protection in the United States for these two marks, the Examiner from the U.S. Patent and Trademark Office rejected the marks as generic. The Examiner also rejected Booking.com’s alternative argument that the marks were descriptive but had acquired distinctiveness for the covered services. The TTAB affirmed.
To determine whether BOOKING.COM was generic, the TTAB looked to evidence of how the relevant public would perceive the mark in the context of the relevant “genus” of services, defined by the Board as “hotel room reservation services and other lodging reservation services.” Consistent with past precedent involving web-based marks such as hotels.com and lawyer.com, the Board approved an analysis that separately evaluated the components “booking” and “.com.”
While acknowledging that it would be impossible to use the term BOOKING.COM “in a grammatically coherent way to refer generically to anything,” the TTAB nevertheless found that the public would understand the term to refer to the relevant genus of services. The Board dismissed survey evidence regarding customer satisfaction as proof of lack of genericness because business success, by itself says “little or nothing about what customers understand the term BOOKING.COM to mean.”
Instead, the TTAB found evidence showing actual third-party uses of the component terms on the Internet to be more persuasive. For example, the TTAB noted that competitors such as “hotelbooking.com” would be hampered if they were prohibited from using “booking.com.” Further, the TTAB found that customers would not perceive any ambiguity or dual meaning in the term “BOOKING.COM.”
The Board also disagreed that the marks had acquired distinctiveness. With respect to the design elements, the TTAB noted that “the design and color elements, considered together, are, inherently, not so distinctive as to create a commercial impression separate and apart from the term BOOKING.COM.” As to the term itself, the TTAB found that the evidence submitted (advertising materials, declarations, articles on business success) was insufficient to show “an impression of single-source identification,” especially given the highly descriptive nature of the mark.
Adopting a mark like BOOKING.COM can help establish a web-based business in a world where potential customers frequently use generic search terms to find an online service that meets their needs. Once established, however, if the website name can not be protected as a trademark, competitors may be able to use and exploit confusion by adopting a similar or identical mark. And, as shown by the Booking.com decision, framing a generic or merely descriptive mark within a relatively ordinary geometric design or using particular fonts or colors for a word mark will generally be insufficient to obtain trademark registration protection.