Booking.com. B.V. v. Matal

• Decision Date: 09 August 2017
• Docket Number: 1:16–cv–425 (LMB/IDD)
• Citation: 278 F.Supp.3d 891
• Parties: BOOKING.COM B.V., Plaintiff v. Joseph MATAL, Performing the Functions and Duties of the Undersecretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, and the United States Patent And Trademark Office, Defendants.
• Court: U.S. District Court — Eastern District of Virginia

278 F.Supp.3d 891

BOOKING.COM B.V., Plaintiff

v.Joseph MATAL, Performing the Functions and Duties of the Undersecretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, and the United States Patent And Trademark Office, Defendants.

1:16–cv–425 (LMB/IDD)

United States District Court, E.D. Virginia, Alexandria Division.

Signed August 9, 2017

Brian Justin Kapatkin, Foley & Lardner LLP, Washington, DC, for Plaintiff.

Dennis Carl Barghaan, Jr., United States Attorney's Office, for Defendants.

MEMORANDUM OPINION

Plaintiff Booking.com B.V. ("Booking.com" or "plaintiff") filed this civil action challenging the denial by the Trademark Trial and Appeal Board ("TTAB") of the United States Patent and Trademark Office ("USPTO") of four trademark applications involving the mark "BOOKING.COM" for services in Classes 39 and 43. One of the applications was for the word mark and three were for stylized versions of the mark. For each of the applications, the TTAB found plaintiff's marks ineligible for registration as trademarks because it concluded that BOOKING.COM is generic for the services identified in the applications or, alternatively, that it is merely descriptive and lacks acquired distinctiveness.

Before the Court are plaintiff and defendants' cross-motions for summary judgment. For the reasons that follow, plaintiff's Motion for Summary Judgment [Dkt. No. 63] will be granted in part and denied in part; defendants' Motion for Summary Judgment [Dkt. No. 60] will be granted in part and denied in part; and the USPTO will be ordered to register the mark BOOKING.COM as to the Class 43 services identified in plaintiff's applications but not as to the Class 39 services.

I. BACKGROUND

On December 1, 2011, plaintiff filed a federal trademark application, Serial No. 85485097 ("'097 Application"), based on use, for the mark:

A3166. The services identified in the application (as amended) were:

Class 39: Travel agency services, namely, making reservations for transportation; travel and tour ticket reservation services; travel agency services, namely making reservations for transportation for tourists; provision of travel information; providing consultation related to making reservations for transportation, and travel and tour ticket reservation; all of the foregoing services rendered in-person and via the internet.

Class 43: Making hotel reservations for others in person and via the internet; providing personalized information about hotels and temporary accommodations for travel in-person and via the Internet; providing on-line reviews of hotels; consultation services related to making hotel reservations for others, provision of personalized information about hotels and temporary accommodations for travel, and on-line reviews of hotels.

Moskin Decl. [Dkt. No. 65–5] ¶ 2.

On June 5, 2012, plaintiff filed Application Serial No. 7911498 ("'998 Application"), for recognition in the United States of its International Registration (hereinafter referred to by the name of the authorizing treaty, "the Madrid Protocol") for the mark:

A4. The services identified in the application (as amended) were:

Class 39: Arranging of tours and arranging of tours online; reservation and sale of travel tickets and online reservation and sale of travel tickets; information, advice and consultancy regarding the arranging of tours and the reservation and sale of travel tickets; provision of information relating to travel and travel destinations; travel and tour agency services, namely, travel and tour ticket reservation services; travel agency services; tourist agency services; providing online travel and tourism services, namely, providing online travel and tour ticket reservation services, online travel agency services, online tourist agency services and providing online information relating to travel and travel destinations.

Class 43: Making hotel reservations for others; holiday accommodation reservation services and resort reservation services, namely providing online hotel and resort hotel room reservation services; providing information about hotels, holiday accommodations and resort accommodations, whether or not based on the valuation of customers; providing information, advice and consultancy relating to making hotel reservations and temporary accommodation reservations; providing online information, advice and consultancy relating to making hotel reservations and temporary accommodation reservations.

Moskin Decl. [Dkt. No. 65–5] ¶ 3.

On November 7, 2012, plaintiff filed two federal trademark applications, Serial No. 79122365 ("'365 Application") and Serial No. 79122366 ("'366 Application"), under the Madrid Protocol for the following marks:

A2153, A1138. The services identified in the two applications (as amended) were limited to a subset of services in Class 43:

Hotel reservation services for others; holiday accommodation reservation services and resort reservation services, namely, providing hotel room reservation services and resort hotel reservation services and providing online hotel and resort hotel room reservation services; providing information about hotels, hotel accommodations and resort accommodations, whether or not based on the valuation of customers; information, advice and consultancy relating to the aforesaid services; aforesaid services also provided electronically.

Moskin Decl. [Dkt. No. 65–5] ¶ 4.

During review by the USPTO, all four applications followed the same procedural history. The examiner initially rejected each application on the ground that BOOKING.COM is merely descriptive of plaintiff's services and therefore unregisterable. A1074, A2089, A3765. After plaintiff objected that the mark BOOKING.COM had acquired distinctiveness, the examiner issued a new refusal, this time on the basis that the word mark is generic as applied to the relevant services and, in the alternative, that the mark is merely descriptive and that plaintiff had failed to establish acquired distinctiveness. A1074, A2089–90, A3766. For each application, plaintiff sought reconsideration of the new refusal and in each instance reconsideration was denied. A1075, A2090, A3766.

Plaintiff filed a Notice of Appeal for each application and requested consolidated briefing before the TTAB, which was granted. A3766. The evidence submitted to the TTAB included dictionary definitions of the words "booking" and ".com;" print-outs of plaintiff's webpages; examples from news articles and travel websites of terms such as "online booking services" and "booking sites," used to refer to hotel reservation and travel agency services; examples of eight third-party domain names that include "booking.com;" a 2012 JD Power & Associates press release and survey results, indicating that Booking.com ranked highest in overall customer satisfaction; and a declaration from plaintiff's director listing awards won by plaintiff and figures regarding plaintiff's sales success, advertising campaigns, followers on social media, and unsolicited news articles. See Def. Mem. at 6; A1089–92.

Following the hearing, the TTAB affirmed the four refusals of registration in three separate opinions. See A1073–111 (denying the appeal for the '998 Application), A2088–126 (denying the appeals for the '365 and '366 Applications), A3764–801 (denying the appeal for the '097 Application). Although there are minor differences among the three opinions, all share the same central conclusions that "booking" refers to "a reservation or arrangement to buy a travel ticket or stay in a hotel room" or "the act of reserving such travel or accommodation;" that ".com" indicates a commercial website, which does not negate the generic character of the term "booking;" and that the combined term BOOKING.COM would be understood by consumers "primarily to refer to an online reservation service for travel, tours, and lodging," which is consistent with the services proposed in the applications, making the mark generic for the services offered. See, e.g., A1092, A1096, A1107. In the alternative, the TTAB concluded that BOOKING.COM is descriptive of plaintiff's services and that plaintiff "failed to demonstrate that the term has acquired distinctiveness." See, e.g., A1111.

On April 15, 2016, plaintiff filed this civil action under 15 U.S.C. § 1071(b) against Michelle Lee, who was then the USPTO Director ("the USPTO Director"),¹ and the USPTO (collectively "defendants"), challenging the USPTO's denial of registration of the four applications. The parties have filed the administrative record from the USPTO proceedings and both sides have produced new evidence on the questions of genericness and descriptiveness. Although the body of evidence before this Court is similar to what was before the TTAB, of significance, plaintiff has now submitted a "Teflon survey," which, as will be discussed below, is the most widely used survey format for measuring consumer opinion in a genericness challenge, and defendants have provided a report by a rebuttal expert. By way of relief, plaintiff asks the Court to reverse the decisions of the TTAB and order the USPTO Director to publish each application in the Principal Register. Compl., [Dkt. No. 1] at 17.

II. DISCUSSION

A. Standards of Review

A trademark applicant "dissatisfied with the decision" of the USPTO has two remedies under the Lanham Act: either "appeal to the United States Court of Appeals for the Federal Circuit," see 15 U.S.C. § 1071(a), or file a civil action against the USPTO Director in federal district court, see 15 U.S.C. § 1071(b). Under § 1071(a), an appeal to the Federal Circuit is taken "on the record" before the USPTO, id. § 1071(a)(4), and the USPTO's factual findings will be upheld if they are supported by "substantial evidence," see, e.g., Recot, Inc. v. Becton, 214 F.3d 1322, 1327 (Fed. Cir. 2000). In contrast, in a civil action under § 1071(b), "the district court reviews the record de novo and acts as the finder of fact." Swatch AG v. Beehive...