RICHMOND, Va. (CN) – Ironing out trademark standards for companies whose names link generic words with internet domains, the Fourth Circuit affirmed branding protection Monday for the travel website Booking.com.
The U.S. Patent and Trademark Office had argued that Booking.com could never be protected because the term is generic, not descriptive, but a federal judge in Virginia sided with the company in 2017, and the Richmond-based federal appeals court upheld that ruling 2-1 Monday.
“Unlike general terms such as ‘crab house,’ looking to the component parts of a domain name may not unambiguously represent the primary significance of the term as a whole given that the relevant public may recognize domain names to indicate specific locations on the internet,” U.S. Circuit Judge Allyson Duncan wrote for the majority. “Thus, even where the domain-name-as-mark technically describes the service provided, it does not necessarily follow that the public commonly understands the mark to refer to the service broadly speaking.”
In its brief, Booking.com called trademark protection necessary to stop “unscrupulous competitors [that] prey on its millions of loyal consumers.”
But U.S. Circuit Judge James Wynn argued in a dissent Monday that this is a problem of the company’s own making.
By choosing to operate under a generic domain that describes the nature of the services it offers, Booking.com is able to “attract the wealth of customers who simply search the web for that service,” wrote Wynn, who was appointed to the bench by President Barak Obama.
“However, in electing that benefit, the entity accepts a trade-off,” the dissent continues. “It must forego the ability to exclude competitors from using close variants of its domain name. On the other hand, the entity can choose to operate under a non-generic domain name — and thereby potentially limit, at least before it has built consumer awareness of its branding, the universe of potential customers who will find its business. Trademark law affords an entity that selects this latter option a special benefit. It can bar competitors from trading on any goodwill and recognition it generates in its domain name.”
In a phone interview Tuesday, trademark lawyer Cliff Hyra with Symbus Law Group touted Duncan’s opinion as a “triumph of common sense over an overly mechanistic legal interpretation.”
“The rule was ‘.com’ could never create a distinct mark and I think that belies what we see in our everyday lives,” Hyra said.
As part of its evidence, Booking.com submitted a consumer survey showing that 74.8 percent of consumers associated its name with the company specifically.
Though Judge Duncan endorsed the consideration of this type of evidence, Hyra noted that smaller companies would be less likely to afford such studies, making it possible that larger companies will use Monday’s ruling to “trademark bully” smaller entities in the future.
Duncan, who was appointed to the bench by President George W. Bush, touched on potential fallout from the ruling a well, noting that the ruling here protects only hotel-reservation services but not travel-agency services.
Thus “protection over Booking.com would not necessarily preclude another company from using, for example, carbooking.com or flightbooking.com,” the ruling states.
Duncan emphasized, however, that plaintiffs will have to show “actual confusion” to prevail in a trademark-infringement suit.
“Given that domain names are unique by nature and that the public may understand a domain name as indicating a single site, it may be more difficult for domain name plaintiffs to demonstrate a likelihood of confusion,” she wrote.
Hyra wondered meanwhile what Booking.com might do now that it got its mark.
“They could go after anyone who’s remotely similar to them and stomp them out,” he said.
A 46-page doorstopper, Monday’s ruling distinguishes the Booking.com name from an 1888 case involving the Goodyear Rubber Company where the Supreme Court noted that you could not trademark “Grain Company” because the name consists of a commercial indicator and a general term describing a class of goods.
“Here, the district court did not err in determining that this case presents one such rare occasion where the record evidence supported a finding that the USPTO failed to meet its burden of proving that the public primarily understood Booking.com to refer to the genus of online hotel reservation services, rather than the company or brand itself,” Duncan wrote.
Another example the Richmond, Virginia-based court cited was “pretzel crisps.”
Here “a court may first determine based on dictionary definitions and other competent sources that ‘pretzel’ is primarily understood to refer to the genus of pretzels, and that ‘crisps’ would be understood as primarily referring to crackers,” Duncan wrote. “But the court must also consider evidence — such as use in newspaper articles or food blogs — to determine whether the term ‘Pretzel Crisps’ is perceived primarily to refer to a crispy pretzel or to a particular source.”
Apart from the USPTO’s appeal, the Fourth Circuit also considered whether Booking.com should have to pay the agency’s legal fees in light of its success with the case.
U.S. Circuit Judge Robert King, a Clinton appointee, joined the majority opinion.
Representatives for Booking.com did not return a request for comment.
A spokesperson for the U.S. Patent Office declined to comment.