Booking.com is a web-based hotel booking website, as anyone who is looked into booking hotels over the Internet will be aware. They have a great domain name, use website traffic promotion tools and, since they get a lot of traffic, have a good google rating.
The company has attempted to register Israel trademark no. 244245 for the word mark “booking.com” in classes 39 and 43. By wordmark, the intention is the word BOOKING.COM without any colours, background or font. The application is a national phase entry of a Madrid Protocol international application.
The list of services in class 39 is as follows:
Arranging of tours; reservation and booking of travel tickets; information, advice and consultancy regarding the aforesaid services, also related to destination issues; the aforesaid services, also provided by travel agents, tour operators and tourist agencies; the aforesaid services also provided electronically
The list of goods and services in class 43 is as follows:
Hotel reservation services; reservation of holiday accommodations, also in resort areas; providing information about hotels, holiday accommodations and resorts (accommodations), whether or not based on the valuation of customers; information, advice and consultancy relating to the aforesaid services; the aforesaid services also provided electronically
The trademark Examiner rejected the mark as being generic for the services covered. The Applicant provided an affidavit of the CFO, Olivier Jean-Marie Bisserier, which testifies to an impressive usage by Israelis.
The Applicant argues that the mark is not generic but merely descriptive and thus able to acquire distinctiveness due to usage. Since the term booking is a verb and not a noun, it is not synonymous with the services. [MF – This is a very interesting and creative argument, however, my English is probably better than both Olivier Jean-Marie Bisserier’s and the attorney of record, and I consider the term booking to be both a verb and a noun. One has made a booking, or has a booking. In other words, it is both reserving and a reservation. Indeed, dictionaries give reservation as a synonym]. Applicant notes that the verb to book has other meanings, such as to arrest and for actions related to books. [MF – Here I am flummoxed. Not only is the word used as a noun and not a verb, but ne wonders if there is really a demand for people to have themselves arrested on-line. Furthermore, does a betting shop make a booking or a book? Is to write or publish a book a booking? creative, but wrong].
Furthermore, the Applicant noted that various similar domain names had been registered in other countries. For example, homecompare.com for insurance is registered in the US, work.com is registered for computer games in the UK and in Israel, weather.com is registered for metorological equipment in the US, answers.com is registered in the US for consultancy and publicity services. The Applicant’s agent also related to verbal arguments provided in the Federal Circuit Court of Appeal in re Steel Building.com 75 USPQ 2D 1420. [MF – it seems to me that none of these cases are analogous in that homecompare.com does not provide homes or even compare homes, but provides insurance services; weather.com does not provide weather details or weather, but meteorological equipment, and answers.com does not provide answers, per se. Furthermore, as none of these are Israel precedents, they are irrelevant. Furthermore, even where a different mark has registered in Israel that an Applicant considers analogous to his case, the Israel Patent Office does not accept such cases as binding precedent or even as guiding].
Deputy Commissioner Ms Jacqueline Bracha notes that the Applicant accepts that generic marks cannot be registered, so the issue in question is whether the mark is indeed generic or merely descriptive.
In this regard, The Deputy Commissioner started with a discussion of the Family Magazine case, and then cited from the Steel Builders case referred to by Applicant:
“A generic term cannot function as an indicator of the source of a product, and thus as a trademark, because the relevant public understands the term primarily as the common name for the product. In re Dial-A-Mattress, 240 F.3d 1341, 1344 (Fed. Cir. 2001). This court’s test for genericness has two parts: first, the court determines the genus of goods or services at issue, and second, the court determines whether the term sought to be registered is understood by the relevant public “primarily to refer to that genus of goods or services.
The top-level domain Steel Builders.com provide design services and not steel-building services, per se. They are not welders or providers of steel beams for the building industry.
As to the general issue of whether a .COM after a generic word is enough to create distinctiveness, the Deputy Commissioner cited com, Inc. v. AOL Adver., Inc., 616 F.3d 974, 978-979 (9th Cir. Cal. 2010):
“There is extensive Federal Circuit precedent in support of our conclusion that the combination of “.com” and “advertising” does not result in a descriptive mark. The Federal Circuit has repeatedly affirmed the Trademark Trial and Appeal Board’s (“TTAB”) findings that marks similar to ADVERTISING.COM are generic. See In re Hotels.com, 573 F.3d 1300, 1304 (Fed. Cir. 2009) (HOTELS.COM); [*979] In re 1800MATTRESS.COM IP, LLC, 586 F.3d 1359, 1361-62 (Fed. Cir. 2009) (MATTRESS.COM); In re Reed Elsevier Props. Inc., 482 F.3d 1376, 1378 [***1314] (Fed. Cir. 2007) (LAW-YERS.COM). The Federal Circuit has been explicit that HN9adding “.com” or another TLD to an otherwise unprotectable term will only in rare circumstances result in a distinctive composite. See In re Steelbuilding.com, 415 F.3d 1293, 1297 (Fed. Cir. 2005) (“Only in rare instances will the addition of a TLD indicator to a descriptive term operate to [**11] create a distinctive mark.”); In re Oppedahl & Larson LLP, 373 F.3d at 1174-76. This position comports with existing Ninth Circuit law explaining that, in the context of likelihood of confusion, the addition of “.com” to a mark generally does not strengthen the mark. See Brookfield Commc’ns. v. W. Coast Entm’t Corp., 174 F.3d 1036, 1055 (9th Cir. 1999).
“To allow trademark protection for generic terms, . . . even when [they] have become identified with a first user, would grant the owner of the mark a monopoly, since a competitor could not describe his goods as what they are.”Surgicenters, 601 F.2d at 1017 (quotation marks omitted). 7 A major advantage that AOL would get from trademark protection of ADVERTISING.COM is to foreclose competitors from using a vast array of simple, easy to remember domain names and designations [**18] that describe the services provided. The effect is similar to that which would result if trademark law embraced the obviously generic ADVERTISING COMPANY as a protectable mark because it “ha[d] become identified with a first user.””
As to the Steelbuilding decision the Deputy Commissioner quoted Luke M. Rona, WHO ARE YOU? DIFFICULTIES IN OBTAINING TRADEMARK PROTECTION FOR DOMAIN NAMES, 8 Wash. J.L. Tech. & Arts 61, 75.
“Steelbuilding stands out as the one recent case where two generic words combined into a compound, coupled with a TLD indicator, almost created a descriptive mark. The failed marks in1800Mattress and Advertise were generic single words that failed to create a distinctive mark when joined with a TLD. While it is difficult to say that a standard for the descriptiveness of domain names as trademarks has emerged in the federal courts, several factors seem to increase the likelihood that a court will categorize a domain name as descriptive.
First, melding two generic words into a compound word creates the possibility of new meaning that could distinctly identify the company behind the goods or services provided, thereby satisfying the “Who are you?” test. Steelbuilding linked an adjective with a noun to create a composite verb, such that the Federal Circuit looked not only at the possibility of selling steel buildings, but alternatively, the actual construction of steel buildings in an online environment. The two words potentially functioned as a verb, thereby moving the mark from purely generic into possibly descriptive.
Second, where a possible double entendre exists, it is much less likely that the mark will be termed generic, and this likelihood decreases further when two generic words are spliced together. The mark in Steelbuilding could have been viewed as an adjective and noun or one compound verb, depending on how the words were interpreted. It is much more difficult for this kind of layered meaning to emerge from a single word like “mattress” or “advertising,” which largely remain confined to one part of speech.”
Furthermore, the dictionary definition from the Miriam Webster dictionary on-line is:
“an arrangement for a person or group (such as a singer or band) to perform at a particular place; an arrangement to have something (such as a room) held for your use at a later time; soccer : the act of officially recording the name of a player who has broken the rules in a game; he act of one that books; an engagement or scheduled performance; reservation.”
Not only is booking a generic term, but its usage for hotel rooms is the example par excellence that the dictionary uses to illustrate the term.
Ms Bracha noted that the booking.com logo in white lettering with particular font and blue background stylized marks registered in Israel as 252107, 252108, 199137 and 199136, and elsewhere. This is the appropriate level of protection.
It would be innaproriate for a generic wordmark to register,which could then be used to prevent competitors using other generic domains such as mybooking.com, bookinghotels.com, hotelsbooking.com and hotels.co.il to provide similar services.
Although booking.com was registered in New Zealand, it was rejected in the US, Japan, South Korea and elsewhere.
The mark remains refused.
Rejection of BOOKING.COM wordmark, Ms Jacqueline Bracha, 9 March 2016
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