In a Section 1071 review of the Board's decision in In re Booking.com B.V., Serial No. 79114998 (February 18, 2016) [not precedential], the U.S. District Court for the Eastern District of Virginia reversed the Board's finding that the term BOOKING.COM is generic for travel agency and hotel reservation services. Booking.com B.V. v. Matal, Civil Action No. 1:16-cv-425-LMB-IDD (August 6, 2017).
On cross-motions for summary judgment, the district court ruled that TLDs are generally source-identifying, and that a mark composed of a generic SLD and a TLD "is usually a descriptive mark eligible for protection upon a showing of secondary meaning." The court found that plaintiff had demonstrated that BOOKING.COM has secondary meaning as to hotel reservation services, but not as to travel agency services. A Teflon-type survey conducted by Friend-of-the-Blog Hal Poret persuaded the court that BOOKING.COM is not generic for these services. Friend-of-the-Blog Jonathan Moskin of Foley & Lardner spearheaded plaintiff's successful challenge to the Board's ruling.
The court ordered the USPTO to register BOOKING.COM for the class 43 hotel reservations services, and remanded two applications to the Office for consideration of whether the design and color elements of those marks, in combination with the word mark, rendered those marks eligible for protection for the class 39 travel agency services.
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