Fourth Circuit protects Booking.com's trademark

The United States Patent and Trademark Office, also known as the Fourth Circuit, deals with trademark standards for companies whose names consist of generic words and internet domains, has confirmed the branding protection of travel website giant, Booking.com.

The U.S. Patent and Trademark Office had argued that Booking.com could never be protected because the term is generic, not descriptive, but a federal judge in Virginia sided with the company in 2017, and the Richmond-based federal appeals court upheld that ruling 2-1 Monday.

“Unlike general terms such as ‘crab house,’ looking to the component parts of a domain name may not unambiguously represent the primary significance of the term as a whole given that the relevant public may recognize domain names to indicate specific locations on the internet,” U.S. Circuit Judge Allyson Duncan wrote for the majority. “Thus, even where the domain-name-as-mark technically describes the service provided, it does not necessarily follow that the public commonly understands the mark to refer to the service broadly speaking.”

In its brief, Booking.com called trademark protection necessary to stop “unscrupulous competitors [that] prey on its millions of loyal consumers.”

But U.S. Circuit Judge James Wynn argued in a dissent Monday that this is a problem of the company’s own making. 

By choosing to operate under a generic domain that describes the nature of the services it offers, Booking.com is able to “attract the wealth of customers who simply search the web for that service,” wrote Wynn, who was appointed to the bench by President Barak Obama.

“However, in electing that benefit, the entity accepts a trade-off,” the dissent continues. “It must forego the ability to exclude competitors from using close variants of its domain name. On the other hand, the entity can choose to operate under a non-generic domain name — and thereby potentially limit, at least before it has built consumer awareness of its branding, the universe of potential customers who will find its business. Trademark law affords an entity that selects this latter option a special benefit. It can bar competitors from trading on any goodwill and recognition it generates in its domain name.”

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