Booking.com has filed a
lawsuit against the U.S. Patent and Trademark Office to have its name
The lawsuit, filed against
the office and its director Michelle Lee, came after Booking.com’s initial
trademark applications were denied and a subsequent appeal was also denied. It
was filed in U.S. District Court in Virginia late last week.
In the suit, Booking.com
claims it has used its moniker since 2006, and prior to that, it used the
similar Bookings.nl since 1997. It contends it has “among the most loyal
consumer following for such travel and accommodations services,” and has
advertised the brand name extensively.
The OTA filed several
trademark applications from 2011-2012, which were subsequently denied by the
Patent and Trademark office “on the dual grounds the mark is either merely
descriptive for the identified services … or is generic for the identified
services,” according to the lawsuit.
In 2014, Booking.com
appealed the denials with the Trademark Trial and Appeal Board, which was
denied on Feb. 18, 2016, “on the asserted grounds that the mark Booking.com is
generic or, in the alternative, that Booking.com is merely descriptive and
plaintiff had failed to prove the mark had acquired secondary meaning.”
Booking.com contends that
is not the case and “there is no actual evidence that plaintiff’s actual
claimed trademark Booking.com ‘is the common descriptive name of a class of
goods or services,’” according to the lawsuit.
The OTA also claims that a
consumer survey it conducted after the appeal denial showed 75% of respondents
recognized Booking.com “as a trademark, not a common name.”
In the lawsuit,
Booking.com claims the appeals board’s evidence of genericness “consisted of
lengthy character strings of third party domain names, such as
‘instantworldbooking.com,’ in which one must hunt to find the characters
‘b-o-o-k-i-n-g-.-c-o-m,’ much like playing a children’s game of word-finder.”
Booking.com also used its
social media presence as an argument that it is not generic, stating it has
over 2.7 million “likes” on Facebook, with nearly 58,000 people “talking about”
its brand on the social media site. The OTA contends its Facebook statistics
are higher than those of Travelocity, Hotels.com, Travelzoo and Orbitz.
Booking.com also cited its 53,200 Twitter followers, more than OTAs Hotels.com,
Trivago and Hotwire.
The lawsuit seeks a
trademark for Booking.com, and any relief the court deems appropriate.