Page 9 - Delaware Lawyer - Summer 2020

The PTO filed a petition for a writ
of certiorari to the U.S. Supreme Court, which granted the petition in November 2019. The Court postponed the oral argument originally set
for March 2020, and reset the oral argument for a historic telephone hearing on May 4, 2020, in view of the Covid-19 pandemic.
hotel reservations and as a source of information about hotels, resorts and temporary accommodations, among other services, including providing the services online. The PTO trademark examiner rejected the applications, finding that “BOOKING.COM” is generic for the services described in the applications and/or, even if it is not generic, “BOOKING.COM” is descriptive of the services and Book- ing.com had not shown that the mark had acquired distinctiveness with con- sumers. Evidence of acquired distinc- tiveness (also known as “secondary meaning”) is often required by the PTO in order to overcome a rejection of a U.S. trademark application based on descriptiveness.
Booking.com appealed to the U.S. Trademark Trial and Appeal Board (TTAB), which affirmed the PTO examiner’s decision denying registra- tion. Booking.com then appealed the
TTAB decision by filing an action in the U.S. District Court for the Eastern District of Virginia and submitting ad- ditional evidence of the acquired dis- tinctiveness of “BOOKING.COM” among consumers, including a survey that showed a majority of consumers understand “BOOKING.COM” as associated with a particular source of services (i.e., as a trademark), and not as a generic term for the services. The survey results seemed to make sense because generally U.S. consumers do not say, “I am going to go online and use a ‘booking.com’ to review hotel in- formation and ratings.” Instead, U.S. consumers might say, “I am going to go online and use a hotel website to review hotel information and ratings.”
The district court reversed the TTAB, finding that the mark “BOOK- ING.COM” is not generic but rather is descriptive and Booking.com had provided evidence of acquired distinc-
tiveness of the mark to consumers, through a survey and other evidence, which was unrefuted by the PTO. Therefore, the district court held that the mark was entitled to a U.S. trade- mark registration.
The PTO appealed the district court’s decision to the U.S. Court of Appeals for the Fourth Circuit, which affirmed the district court’s decision. The Fourth Circuit Court of Appeals applied the fact-specific “primary sig- nificance” test to determine whether or not the mark is generic. In a very thorough and well-reasoned opin- ion, Judge Duncan found that “when ‘.com’ is combined with an SLD [sec- ond-level domain], even a generic SLD, the resulting composite may be non- generic where evidence demonstrates that the mark’s primary significance to the public as a whole is the source, not the product.”2
The PTO filed a petition for a
SUMMER 2020 DELAWARE LAWYER 7