Priceline Throws A Fit And Sues USPTO For Not Granting Them Booking.com Trademark
from the generically-speaking dept
The Priceline Group has something of a history with intellectual property. Several years back, Jay Walker, Priceline's founder, appeared to have transitioned to becoming a full-blown patent troll. In the year's since, the company he once founded has been in something of a tussle with the USPTO over its attempt to register a trademark for "booking.com." The USPTO had initially approved of the mark, before reversing its own decision only weeks later due to "booking.com" being essentially descriptive. The Priceline Group appealed, but the appeals board upheld the rejection of the mark, affirming it as being descriptive.
You might have thought that this would be the end of the story. It's not. Priceline Group has now sued the USPTO over its rejection.
Given that Booking.com filed the trademark application as a “travel agency service,” Booking.com’s lawsuit, filed April 15 in federal court in Alexandria, Virginia, states “there is no evidence in the entire history of Booking.com’s use of its trademark that any consumers or users of travel agency services refer to such sites as ‘Booking.com’s.'”The commissioned survey, as you'd expect, concludes exactly what Priceline Group wants it to conclude. Still, that doesn't particularly change the nature or reasoning behind the USPTO's rejection. If I want to go about booking a hotel, "booking.com" is descriptive of the service that is being offered at the site. I'm struggling to see exactly what the argument from Priceline Group actually is here, because this one seems fairly easy to grasp.
A Booking.com-commissioned survey found that 75 percent of its users “recognize BOOKING.COM as a trademark, not a common name,” the suit states.
The crux of this flailing by the company appears to be how much money its invested in transitioning its brand from Priceline to Booking.com.
Booking.com stated that it has invested enormous resources in advertising, for example, to spread its brand, which it has used since 2006. The Amsterdam-based Booking.com also stated that it has used the similar mark, Booking.NL, since 1997. Booking.com further chided the appeals panel for finding that BOOKING.COM had not become a distinctive brand among consumers. Booking.com’s lawsuit states that more than 2 million U.S. consumers signed up for its newsletter; it has more than 2.7 million Facebook “likes,” and almost “58,000 members of the relevant public were already ‘talking about’ Plaintiff’s brand on Facebook.com, higher than other accommodations and travel companies such as TRAVELOCITY, HOTELS.COM, TRAVELZOO AND ORBITZ.”Much of which appears to demonstrate just how little the company relies on "booking.com" being a registered trademark in the first place. After all, it appears to be doing quite well in terms of reputation and traffic. And still none of this translates into an argument that the term "booking" isn't descriptive. I'm not sure why the company is spending so much time in the courts with this lawsuit rather than simply continuing the rack up the fees its business is generating.
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Filed Under: trademark, uspto
Companies: booking.com, priceline
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Booking.com
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That's not surprising considering 99% plus of it's users probably don't know things like, the difference between a patient and a trademark either.
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This is, of course, entirely separate from trademarking "booking", which is is obviously generic. Notice how in their protest, which you go so far as to quote, they note other travel related trademarks: Travelocity, hotels.com (note the added .com which takes the generic "hotels" and makes it a trademark), Travelzoo, and Orbitz.
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Wait a minute, wait, wait....
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Maybe they should have waited until they got the trademark first. Seems they put the cart before the horse.
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No, if you want to book a hotel, "booking" is descriptive of the service being offered. This is one case where "adding 'on a computer'", as it were, actually does make a fundamental difference. "Booking" is an action; "booking.com" is a specific tool to perform that action.
Having said that, if I want to go about booking a hotel, I generally just use Orbitz. :P
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Booking.com also tries to skirt the very big issue that TLDs like ".com" are not considered in trademark analysis. The determination is made on "Booking" which at best is descriptive, if not generic when referring to a travel booking site.
Booking.com's claim that nobody refers to travel sites as "booking.com's" [sic, why apostrophe?] is a disingenuous attempt to draw attention away from the fact that "Booking" is the mark that is being reviewed for distinctiveness. They certainly know that; so does the USPTO.
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This really should have been described and cited in the article. Tim made absolutely no mention of this fact and it's critically important in evaluating the claim.
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Typo
Thank you...
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You can buy twitter "followers" for trivial amounts of money. Giving away a trinket or discount for a "like" will get millions of results.
If a company is using this as a claim for name recognition, their other claims must be really weak. Or they are counting on the judge to be old and clueless. (Even if they are, law clerks should be whispering into their hearing aid.)
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The Real Grab
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They need this trademark
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Re: They need this trademark
You're saying without this trademark, Priceline is at risk of having their competitors advertise their web site for them? They could only wish for that "problem".
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Really? Apparently you have never had children, otherwise you would know what the phrase means. This is barely a solid foot stomp.
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Re: Re: They need this trademark
I do think this is about as stupid and ridiculous as it comes. Some years back, I saw a billboard "Firestone Tires Are Great (tm)" and I thought WTF?? Do they really think Goodyear is going to steal that? The whole trademark madness is completely out of control. Every inane utterance is trademarked these days. Otherwise sensible people have gone deep into the stupid.
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Re: Re: Re: They need this trademark
My apologies. There are people who are really that dumb, and I didn't know if you were one of them.
Some years back, I saw a billboard "Firestone Tires Are Great (tm)" and I thought WTF?? Do they really think Goodyear is going to steal that?
I wonder if they didn't put much thought into it, and just automatically trademarked everything possible.
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*in the common sense of the word, not the particular sense pertaining to fair use/copyright considerations
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Getting a trademark in a domain name
An interesting aspect of the complaint is that it recites a bunch of dictionary definitions (grafs 63 to 67) without ever acknowledging that a common meaning of "booking" is, making a reservation.
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