Travel site Booking.com has run into a wall trying to get trademarks related to its namesake, and it’s going to court to overturn U.S. Patent and Trademark office decisions.
The USPTO argues that Booking.com is merely descriptive of the travel services that the site offers, so it can’t be trademarked.
Booking.com filed suit (pdf) on Friday to try to get the USPTO to grant the trademarks.
Although we in the domain name industry promote the value of category-defining domain names, an obvious drawback is the challenge of getting trademarks.
Booking.com is well known in the domain name business for its odd booking.yeah advertising campaign that makes up a fictitious top level domain name. The company also paid $2.2 million in an auction for rights to operate the .hotels top level domain name.
Very confused company, no? Known for Booking.Yeah yet wants to use .Hotels. Denied a tm on its name, this company needs a branding expert and should consider sticking with .com since the gtlds are a guarantee for confusion. Wonder how many hits they have managed to wastefully generate for bookings.yeah, a site they foolishly promoted yet never even existed.
John Berryhill says
This will be a good case to watch, but you really have to wonder “what is the prize?” here. The exclusive right to use “booking.com”? They have that. Additionally, any “infringer” who uses “booking.com” in an advertisement, simply sends traffic to the actual site.
You could ask “what about substrings?” or “what about other TLD’s?”. The problem with those questions is that the argument they set up in order to advance distinctiveness of “booking.com” as a mark, (a) relies on that specific combination, and (b) distinguishes over domain names which include words other than simply “booking.com”.
Their argument is that “booking.com”, as such, is not merely perceived as “a site where one can book reservations”, but as their particular service of doing so. One of the entire points about generic or descriptive domain names, however, is that exclusivity is automatic – there is and can be no other “booking.com” than the one located at the domain name booking.com. Expending the effort to gain a “legal” exclusive right to use “booking.com” buys you the right to do what? Prevent someone else from using “booking.com”?
The other weird thing here is that they rely on a consumer survey conducted _after_ the TTAB decision. They are asking the court to reverse the TTAB decision on the basis of evidence that wasn’t before the TTAB. Given the number of third party briefs this action is likely to generate, the court would do well to remand to the TTAB for consideration of the survey and a more complete factual record the next time it comes up.
Great info. I see that booking.co, booking.org, booking.mobi even ebooking.com and tons of other names that are in the booking hotel business or just fwd the name to another site. I mean they just bought booking.mobi from owner for 15k or something how or what would happen to all these names mistype or not if they got a TM.
If they got this TM could they go after these names or are they saying they just want the TM on booking.com. It does not make sense.
The same goes for hotels.com they tried to get TM but they said NO. If say they did get the TM could they go after companies names like ehotel.com, cheaphotels.com.
Angry Citizen says
What a turd company for trying to trademark the word “booking” for “booking”. They should lose their domain for trying to steal the word from public use.
It’s crap like this that makes the citizens angry. Go Democracy Spring and strike down these sleazy companies with votes that count to hold the USPTO accountable and liable for giving away generic words to big corporate interests.
You suck Booking.com ….. .yeah
Priceline’s complaint for booking.eu was rejected for several reasons including descriptive character of BOOKING trademark, here the summary + link of the 3-member panel decision I presided http://www.weblegal.it/en/2016/04/19/booking-eu-czech-arbitration-court/