Opposition Brief — United States Patent and Trademark Office, et al., Petitioners v. Booking.com B.V.

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No.: 19-46

In The Supreme Court of the United States

UNITED STATES PATENT AND TRADEMARK

OFFICE; ANDREW IANCU, in his official capacity as

Under Secretary of Commerce for Intellectual

Property and director of the United States Patent and

Trademark Office,

Petitioners,

BOOKING.COM B.V.

Respondent.

ON PETITION FOR A WRIT OF CERTIORARI TO

THE UNITED STATES COURT OF APPEALS

FOR THE FOURTH CIRCUIT

OPPOSITION TO PETITION FOR A WRIT OF

CERTIORARI

JONATHAN E. MOSKIN

Counsel of Record

EOIN CONNOLLY

FOLEY & LARDNER LLP

90 Park Avenue

New York, NY 10016

(212) 682-7474

jmoskin@foley.com

Counsel for Respondent

QUESTIONS PRESENTED

Is the decision of the District Court,

affirmed by the Fourth Circuit, clearly

erroneous in finding, as a factual matter,

that the United States Patent and

Trademark Office (“PTO”) failed to sustain

its burden of proving by clear evidence that

the name of one of the best-known on-line

travel and hotel reservation services in the

world, BOOKING.COM, is primarily used by

consumers as a generic term for all online

hotel reservation services, despite the PTO’s

own admission that it is logically and

grammatically impossible to use the name

BOOKING.COM as a generic term for

anything; despite the absence of any

evidence that the name is actually used

generically;

and

despite

substantial

affirmative evidence that BOOKING.COM is

primarily recognized as a trademark?

Is there any basis to reject the

Supreme Court’s longstanding precedent and

the express statutory language of the

Lanham Act, 15 U.S.C. 1051 et seq., defining

genericness as a factual question of the

“primary significance” of a term among

consumers, and instead redefining it as a

legal question?

RULE 29.6 STATEMENT

Respondent Booking.com B.V. is a

wholly owned subsidiary of Booking

Holdings, Inc., f/k/a The Priceline Group,

Inc., which is publicly traded.

iii

TABLE OF CONTENTS

STATEMENT ...................................... 1

II.

FACTUAL BACKGROUND ............. 20

III.

ARGUMENT ..................................... 24

IV.

The PTO Misstates the

Distinction Between

Genericness and

Descriptiveness....................... 24

Denying Registration of

BOOKING.COM

Frustrates the Purposes

of the Lanham Act .................. 35

CONCLUSION .................................. 41

TABLE OF AUTHORITIES

Page(s)

Cases

In re 1800Mattress.com IP,

LLC,

586 F.3d 1359 (Fed. Cir.

2009)........................................................ 17

Abercrombie & Fitch Co. v.

Hunting World, Inc.,

537 F.2d 4 (2d Cir. 1976) ........................ 24

Advertise.com, Inc. v. AOL

Advert., Inc.,

616 F.3d 974 (9th Cir. 2010) ............ 18, 19

Am. Online, Inc. v. AT&T Corp.,

243 F.3d 812 (4th Cir.), cert

dismissed, 534 U.S. 946

(2001) ...................................................... 31

In re American Fertility Soc’y,

188 F.3d 1341 (Fed. Cir.

1999).......................................................... 6

Automobile Club of Southern

Cal. v. The Auto Club, Ltd.,

2007 WL 704892 (C.D. Cal.

Mar 15, 2007) .......................................... 29

Berner Int’l Corp. v. Mars Sales

Co.,

987 F.2d 975 (3d Cir. 1993) .................... 28

Bose Corp. v. Int’l Jensen, Inc.,

963 F.2d 1517 (Fed. Cir.

1992)........................................................ 27

Burger King Corp. v. Pilgrim’s

Pride Corp.,

705 F. Supp. 1522 (S.D. Fla.

1988), aff’d, 894 F.2d 412

(11th Cir. 1990)....................................... 29

In re Callaway Golf Co.,

2001 WL 902004 (T.T.A.B.

Aug 9 2001) ............................................. 29

Canal Company v. Clark,

80 U.S. (13 Wall.) 311 (1871) ................. 11

Citibank, N.A. v. Citibanc

Group, Inc.,

724 F.2d 1540 (11th Cir.

1984)........................................................ 27

In re Dial-A-Mattress Operating

Corp.,

240 F.3d 1341 (Fed. Cir.

2001)............................................ 17, 25, 39

E.I. DuPont de Nemours & Co.

v Yoshida Int’l, Inc.,

393 F. Supp. 502 (E.D.N.Y.

1975)........................................................ 29

Elliot v. Google,

860 F.3d 1151 (9th Cir.

2017)............................................ 27, 28, 38

Fortune Dynamic, Inc. v.

Victoria’s Secret Stores

Brand Mgmt., Inc.,

618 F.3d 1025 (9th Cir.

2010)........................................................ 28

Goodyear’s India Rubber Glove

Manufacturing Co. v.

Goodyear Rubber Co.,

128 U.S. 598 (1888) .......................... 11, 12

H. Marvin Ginn Corp. v. Int’l

Ass’n of Fire Chiefs, Inc.,

782 F.2d 987 (Fed. Cir. 1986) ............. 6, 26

Honestech, Inc. v. Sonic Sols.,

430 F. App’x 359 (5th Cir.

2011)........................................................ 30

In re Hotels.com, L.P.,

573 F.3d 1300 (Fed. Cir.

2009)........................................................ 17

vii

Hunt Masters, Inc. v. Landry’s

Seafood Rest., Inc.,

240 F.3d 251 (4th Cir. 2001) .................. 33

In re Chamber of Commerce,

675 F.3d 1297 (Fed. Cir.

2012)........................................................ 26

Inwood Laboratories, Inc. v.

Ives Laboratories, Inc.,

456 U.S. 844, 72 L. Ed. 2d

606, 102 S. Ct. 2182 (1982) .................... 32

James Burroughs, Ltd. v. Sign

of the Beefeater, Inc.,

540 F.2d 266 (7th Cir. 1976) .................. 37

Kellogg Co. v. National Biscuit

Co.,

305 U.S. 111 (1938) .................................. 1

KP Permanent Make-Up, Inc. v.

Lasting Impression I, Inc.,

543 U.S. 111 (2004) ................................ 40

March Madness Athletic Ass’n,

LLC v. Netfire, Inc.,

310 F. Supp. 2d 786 (N.D.

Tex. 2003)................................................ 30

McMellon v. United States,

387 F.3d 329 (4th Cir. 2004) .................. 10

viii

In re Merrill Lynch, Pierce,

Fenner, & Smith, Inc.,

828 F.2d 1567 (Fed. Cir.

1987).................................................... 1, 18

Newell Cos. v. Kenney Mfg. Co.,

864 F.2d 757 (Fed. Cir. 1988) ................. 10

In re Oppedahl & Larson,

373 F.3d 1171 (Fed. Cir.

2004)...... 7, 9, 10, 11, 12, 15, 17, 18, 26, 28

Estate of P.D. Beckwith v.

Comm’r of Patents,

252 U.S. 538 (1920) .................................. 5

PBM Prod., LLC v. Mead

Johnson & Co.,

639 F.3d 111 (4th Cir. 2011) .................. 30

Perini Corp. v Perini Constr.,

Inc.,

915 F.2d 121 (4th Cir. 1990) .................. 27

Pizzeria Uno Corp. v. Temple,

747 F.2d 1522 (4th Cir.

1984).................................................... 2, 18

Polaroid v Polarad,

287 F.2d 492 (2d Cir. 1961) .................... 39

Pom Wonderful LLC v.

Hubbard,

775 F.3d 1118 (9th Cir.

2014)........................................................ 27

Princeton Vanguard, LLC v.

Frito-Lay N. Am., Inc.,

786 F.3d 960 (Fed. Cir. 2015) ......... 5, 6, 28

Q-TIPS, Inc. v. Johnson &

Johnson,

108 F. Supp. 845 (1952) .......................... 38

Qualitex Co. v. Jacobson Prod.

Co.,

514 U.S. 159 (1995) .................... 11, 32, 37

In re Reed Elsevier Props. Inc.,

482 F.3d 1376 (Fed. Cir.

2007)........................................................ 17

In re Seats, Inc.,

757 F.2d 274 (Fed. Cir. 1985) ................. 27

Sportschannel Assocs. v.

Commissioner of Patents

and Trademarks,

903 F. Supp. 418 (E.D.N.Y.

1995)........................................................ 29

In re Steelbuilding.com,

415 F.3d 1293 (Fed. Cir.

2005).................................................. 12, 26

Swatch AG v. Beehive

Wholesale, LLC,

739 F.3d 150 (4th Cir. 2014) .............. 1, 18

TrafFix Devices, Inc. v.

Marketing Displays, Inc.

532 U.S. 23 (2001) ............................ 31, 32

Ty Inc. v. Softbelly’s Inc.,

353 F.3d 528 (7th Cir. 2003) ...... 25, 29, 40

Statutes

15 U.S.C. § 1071 ........................................... 21

15 U.S.C. § 1115(b)(4) .................................. 40

Lanham Act ............ 1, 5, 11, 22, 35, 36, 38, 40

Other Authorities

S. Rep. 1333 (1946), reprinted

in 1946 U.S. Code & Cong.

Serv. 1274, 1274 ..................................... 36

S. Rep. No. 98-627, reprinted in

1984 U.S.C.C.A.N. 5718 ......................... 38

Trademark Manual of

Examining Procedure §

1209.01(c)(i) (Oct. 2018) ........................... 1

STATEMENT

Whether a trademark is generic is a

question of fact. Swatch AG v. Beehive

Wholesale, LLC, 739 F.3d 150, 155 (4th Cir.

2014); In re Merrill, Lynch, Pierce, Fenner,

& Smith, Inc., 828 F.2d 1567, 1570 (Fed. Cir.

1987). The factual question of genericness is

decided under the primary significance test

first enunciated by the Supreme Court over

80 years ago. Kellogg Co. v. National Biscuit

Co., 305 U.S. 111, 118 (1938) (holding that a

term is not generic if “the primary

significance of the term in the minds of the

consuming public is not the product but the

producer”).

This was later expressly

incorporated into the Lanham Act, which

states that the test for genericness of a mark

is its “primary significance . . . to the

relevant public.” 15 U.S.C. § 1064(3). The

United States Patent and Trademark Office

(“PTO”) in petitioning for certiorari, cites no

authority to suggest otherwise.

Under settled law, the PTO had the

burden of proving genericness by “clear

evidence.” In re Merrill, Lynch, 828 F.2d at

1571; Trademark Manual of Examining

Procedure

§ 1209.01(c)(i)

(Oct.

2018)

(hereinafter “TMEP”) (“The Examining

Attorney has the burden of proving that a

term is generic by clear evidence.”). That

was the burden applied by the District

Court, and the Fourth Circuit concurred.

Pet’r’s App. at 8a-9a, 60a. Likewise, as an

issue of fact, the standard of review applied

by the Fourth Circuit on the question of

genericness was one of clear error. See

Pet’r’s App. at 7a; accord Pizzeria Uno Corp.

v. Temple, 747 F.2d 1522, 1526–27 (4th Cir.

1984) (“clearly erroneous” means “there is no

evidence in the record supportive of it and

also, when, even though there is some

evidence to support the finding, the

reviewing court, on review of the record, is

left with a definite and firm conviction that a

mistake has been made in the finding.”)1

1 Although the District Court reached

its decision on cross motions for summary

judgment, both parties had stipulated that

the District Court was authorized to resolve

any disputes of material fact. Pet’r’s App. at

55a. Thus, rather than resort to the de novo

standard typically employed on review of a

decision on summary judgment, the Fourth

Circuit properly reviewed the District

Court’s findings of fact for clear error. Pet’r’s

App. at 13a & n.7 (“Genericness is a question

of fact to which the district court, as the trier

of fact, is accorded great deference. . . .

Specifically, we defer to the district court’s

The PTO’s petition for certiorari omits

reference to the settled factual test of

primary significance among consumers and

does not address either its burden of proof or

the standard of review applied below. It

therefore identifies no error of fact in the

decision of the District Court or in the

Fourth Circuit’s decision to affirm. Not only

is there not a single piece of evidence that

any consumers have ever used the

trademark BOOKING.COM as a generic

term to describe any class of services (e.g., “I

just logged on to my booking.com;” or

“Expedia or Travelocity are some of several

‘booking.coms’”), but the PTO itself conceded

at the administrative level that “it is

impossible to use BOOKING.COM in a

grammatically coherent way to refer

generically to anything,” and that “it is not

at all logical to refer to a type of product or

service as a ‘booking.com.’” Pet’r’s App. at

166a.

Here, the evidence demonstrates that

the primary significance of the name

BOOKING.COM is as a trademark (and not

to identify an entire class of goods or

services). Nevertheless, the PTO urges this

factual finding regarding the primary

significance of the mark to the public . . . .”).

Court to reframe the issue as a matter of

law, such that the term BOOKING.COM can

be deemed generic based simply on

questionable interpretations of decisions

made in other cases regarding other claimed

trademarks and other facts. In none of the

cases cited by the PTO was there an

admission (by an administrative tribunal of

the PTO itself) that the mark simply cannot

be used generically; in none was there an

admissible consumer survey confirming the

primary significance of the term was as a

trademark; in none was the mark in issue

the leading brand in its field; and in none

was there unrebutted scientific evidence

confirming that the theory of genericness

propounded by the party with the burden of

proof was refuted by settled linguistic

principles. Simple common sense indicates

that, merely by looking at other decisions on

other evidence concerning other “.com

trademarks,” one cannot assess whether, as

a matter of fact, consumers recognize

BOOKING.COM as a trademark (or, rather,

as a term that applies to all other travel

agencies, such as Expedia or Travelocity, in

the same way that “computer” refers to IBM,

Apple, Hewlett Packard or other machines).

This is particularly true given the status of

BOOKING.COM as perhaps the best-known

and most successful brand for such travel

services.

No principle of jurisprudence supports

deciding factual issues in this manner, nor

does the Lanham Act permit any special

carve-out for particular types of trademarks.

There is simply one test of genericness

applicable to all trademarks.

Nor does law or logic (or undisputed

linguistic science presented in the District

Court) permit assessing the elements

“booking” and “.com” in isolation, and then

postulating that if each could be assumed

generic, the whole could likewise be deemed

generic

irrespective

the

primary

significance test as applied to the whole. As

a starting point, blackletter law requires

that marks cannot be dissected into

Estate of P.D.

individual elements.

Beckwith v. Comm’r of Patents, 252 U.S.

538, 545-46 (1920) (“The commercial

impression of a trade-mark is derived from it

as a whole, not from its elements separated

and considered in detail.”).

Princeton

Vanguard, LLC v. Frito-Lay North America,

Inc., succinctly explained why there can be

no such procedural short-cut in deciding the

factual issue of genericness for compound

terms such as BOOKING.COM:

[T]o determine whether a mark

is generic … the Board must

first identify the genus of goods

or services at issue, and then

assess whether the public

understands the mark, as a

whole, to refer to that genus.

Marvin Ginn, 782 F.2d at 990.

On appeal, Frito-Lay cites our

decisions

Gould

and

American Fertility to suggest

that the Board can somehow

short-cut its analysis of the

public’s perception where “the

purported mark is a compound

term consisting merely of two

generic words.” ... [H]owever,

there is no such short-cut, and

the test for genericness is the

same, regardless of whether the

mark is a compound term or a

phrase.

786 F.3d 960, 966 (Fed. Cir. 2015). For just

this reason, COCA-COLA can be (and plainly

is) recognized by consumers as a trademark

despite simply being two generic terms

separated by a hyphen.

Likewise

AMERICAN AIRLINES is simply two

generic terms, but is hardly a generic term

for all United States airlines.

Nor was there even any evidence that

the individual element “booking” is used

generically – for instance that the word

“booking” has ever been used by anyone to

refer to reservation services in general (e.g.,

“I just logged on to my booking;” or “Expedia

is one of several ‘bookings’”). And controlling

precedent (at least in the Federal Circuit) is

that the element .com is descriptive, not

generic. In re Oppedahl & Larson, 373 F.3d

1171, 1176 (Fed. Cir. 2004) (“Appellant's

identification of goods includes the use of the

Internet. Accordingly, ‘.com’ is descriptive of

this feature of the goods listed in the

application”).

The PTO now asks this Court to

jettison settled law and convert the factual

issue of genericness into an issue of law. The

PTO thus presents the question for this

Court as “[w]hether the addition by an online

business of a generic top-level domain

(“.com”) to an otherwise generic term can

create a protectable trademark.” Pet’r’s Br.

at (I). Although no court has ever so-ruled,

the PTO hopes that this Court will create a

new rule at odds with settled precedent

under which marks can be dissected into

separate pieces, and factual questions about

the descriptiveness or genericness of the

constituent elements set aside. Because the

PTO admits (and prior cases have found)

that some marks potentially fitting its

criterion are registrable and protectable, it is

also impossible to know how such a per se

rule would be applied.

Stated differently, the PTO seeks a

per se rule that some class of marks are

generic as a matter of law, even where it is

unable to sustain its burden of proving that

the primary significance to consumers is

other than as a trademark. Despite the

PTO’s claims of a conflict between the

decision below and decisions from the

Federal and Ninth Circuits, none of the

decisions cited by the PTO created a per se

rule that a mark formed from an allegedly

generic term and a top-level domain (“TLD”)

is generic as a matter of law, and relevant

precedent holds that “.com” is descriptive,

not generic. Oppedahl & Larson, 373 F.3d at

1176. Like the District Court and Fourth

Circuit below, each of the decisions cited by

the PTO determined genericness as a

question of fact.2

See Advertise.com, Inc. v. AOL

Advert., Inc., 616 F.3d 974 (9th Cir. 2010)

(“[W]e create no per se rule against the use of

domain names, even ones formed by

combining generic terms with TLDs, as

trademarks”); In re Hotels.com, L.P., 573

F.3d 1300, 1306 (Fed. Cir. 2009) (“The

Board's finding that HOTELS.COM is

As noted above, the PTO is also simply

incorrect that the Fourth Circuit decision in

any way conflicts with prior Federal Circuit

precedent.

Indeed, the Federal Circuit’s

2004 decision, Oppedahl & Larson, deemed

the

claimed

mark

PATENTS.COM

descriptive (not generic), concluding that

“TLD marks may obtain registration upon a

showing of distinctiveness . . . [and] [t]he

Board properly left that door open for this

patents.com mark . . . .” 373 F.3d at 1176.

The Federal Circuit likewise introduced this

concluding section of its decision by

specifically noting that it would be “legal

error” to preclude registration of the “.com”

trademark where secondary meaning is

proven.

Id. at 1175-76. It also noted

separately that it would allow registration of

.com marks without proof of acquired

distinctiveness if the mark had some

generic was supported by substantial

evidence.”); In re 1800Mattress.com IP, LLC,

586 F.3d 1359, 1364 (Fed. Cir. 2009) (holding

that “substantial evidence [supported] the

Board’s conclusion” that MATTRESS.COM is

generic); In re Reed Elsevier Props. Inc., 482

F.3d 1376, 1380 (Fed. Cir. 2007) (holding

that “substantial evidence [supported] the

board’s finding” that LAWYERS.COM is

generic).

inherent

distinctiveness,

citing

the

hypothetical “Tennis.net” for example. Id. at

1175. The court further ruled that the

element .com is descriptive, not generic. Id.

at 1176. No en banc panel of the Federal

Circuit has ever overruled Oppedahl &

Larson, and thus it remains the controlling

law in the Federal Circuit.3

Here, consistent with Oppedahl &

Larson, the PTO conceded the existence of

secondary

meaning

the

name

BOOKING.COM, which the Fourth Circuit

deemed critically important. Pet’r’s App. at

8a. Disregarding the facts, in what is simply

a factual inquiry, the PTO instead now seeks

to create a new rule under which evidence of

primary significance and evidence of

secondary meaning (i.e., that consumers do

actually recognize a term as a trademark)

can be excluded as a matter of law based on

some undefined a priori classification of

Because no en banc panel of the

Federal Circuit has ever overruled Oppedahl

& Larson, it remains controlling over later

Federal Circuit decisions to the extent they

are inconsistent. See Newell Cos. v. Kenney

Mfg. Co., 864 F.2d 757, 765 (Fed. Cir. 1988);

McMellon v. United States, 387 F.3d 329,

334 (4th Cir. 2004).

trademarks. The Lanham Act permits no

such sub-class of marks and no case has ever

held that genericness can be decided as a

matter of law. Nor has the PTO even

attempted to define with any precision what

this subclass would be.

Oppedahl & Larson also demonstrates

the PTO’s error in citing Goodyear's India

Rubber Glove Manufacturing Co. v.

Goodyear Rubber Co., as proof that “.com”

marks cannot be protected. 128 U.S. 598

(1888). Goodyear’s, decided 60 years before

the Lanham Act (and 110 years before the

commercial internet), made no finding of

genericness, instead referring to “Goodyear

Rubber” as descriptive terms. Id. at 602.

Indeed, at the time, descriptive and generic

terms were equally unprotectable under the

common law. Canal Company v. Clark, 80

U.S. (13 Wall.) 311, 323 (1871). It was not

until the Lanham Act that descriptive terms

could be protected.

This Court has

previously distinguished decisions from

before the enactment of the Lanham Act

because the Act “significantly changed and

liberalized the common law to ‘dispense with

mere technical prohibitions,’ most notably,

by permitting trademark registration of

descriptive words . . . where they had

acquired ‘secondary meaning.’” Qualitex Co.

v. Jacobson Prod. Co., 514 U.S. 159, 171

(1995).

Even assuming Goodyear’s was

referring to genericness under the common

law of the day (as distinct from

descriptiveness), it did not articulate the

“primary significance” test, so it is

impossible to know what standard it used.

However, Oppedahl & Larson specifically

distinguished Goodyear’s in concluding both

PATENTS.COM and the element “.com”

itself are descriptive, not generic, and hence

protectable on a showing of secondary

meaning. Oppedahl & Larson, 373 F.3d at

1175-76. Oppedahl & Larson thus clarified

that even if entity designations such as

“Corp.” have no inherent source-identifying

function (which is true of all descriptive

terms), “TLDs immediately suggest a

relationship to the Internet,” and therefore

the Court found that Goodyear’s “does not

operate as a per se rule . . . with respect to

TLDs.”

Id. at 1175.

In In re

Steelbuilding.com, the Federal Circuit

reiterated that “Goodyear's did not create a

per se rule for TLD indicators” and found

that the applicant’s “TLD indicator expanded

the

meaning

the

[STEELBUILDING.COM] mark” and was

therefore descriptive. 415 F.3d 1293, 1299

(Fed. Cir. 2005).

Indeed, common sense reveals how the

element “.com” alters the meaning of words,

as the primary meaning of “Amazon” is a

river (or to classics scholars, a race of women

warriors), yet addition of “.com” immediately

changes its meaning. And while “staples”

are any kind of necessity or a specific type of

office supply to bind papers, Staples.com is a

leading retailer of office supplies and a mark

that was registered by the PTO.

Moreover, applying the Lanham Act

(rather than the common law as it existed in

1888), the PTO itself has registered several

such marks, including the well-known retail

chain, THE LIMITED (Reg. Nos. 4,108,367

and 1,062,519); INC. (Reg. No. 3,303,369),

INCORPORATED (Reg. No. 5,276,951) and

COMPANY (Reg. No. 1,192,531).

As a

factual matter, the PTO is simply wrong in

citing Goodyear’s, conflating descriptiveness

and genericness. Even these marks can

acquire secondary meaning. It offered no

contrary proof below and has no basis to

argue otherwise now.

Similarly, and more directly relevant,

the PTO regularly permits the registration of

what it now refers to as “generic.com” marks

(a term it never precisely defines).

addition to STAPLES.COM for online retail

services for office supplies (Reg. No.

2,397,238),

has

registered

WEATHER.COM

for

“on-line

publications . . . in the field[] of meteorology,”

(Reg. No. 2,699,088), ANCESTRY.COM for

“on-line electronic databases in the field of

genealogy research,” (Reg. No. 3,568,993),

ANSWERS.COM for “[p]roviding specific

information as requested by customers via

the Internet,” (Reg. No. 3,862,166),

CHEAPTICKETS.COM for “travel agency

services,

namely,

making

travel

arrangements; [and] making reservations

and bookings for transportation,” (Reg. No.

2,665,841), and only two weeks after filing

its Petition for Certiorari, the PTO issued a

registration

for

“SCUBA.COM”

for

“[c]omputerized on-line retail store services

in the field of scuba equipment,” (Reg. No.

These

registrations

5,807,062).4

4 Many other such examples of marks

the PTO has registered are in the record,

including:

LOCAL.COM;

CHEAPROOMS.COM;

MONEYLAUNDERING.COM;

WWW.HEDGEFUNDRESEARCH.COM;

WORKOUT.COM;

PARTYDIGEST.COM;

UNIVERSITYJOBS.COM;

ORANGECOUNTY.COM;

DEALER.COM;

DIAPERS.COM;

REPLACEYOURCELL.COM;

SKI.COM;

demonstrate that the PTO’s alleged concern

with “serious and immediate anticompetitive

harms” should be given little weight,5 Pet’r’s

Br. at 26, and fundamentally undermine the

premise of its petition that a subclass of

trademarks can, a priori, be refused

protection irrespective of all evidence of

actual consumer understanding. This is not

to say such names are inherently distinctive;

but as recognized in Oppedahl & Larson,

admitting they may be descriptive does not

preclude them from becoming protected if

they acquire secondary meaning, and does

not require redefining the plain statutory

and precedential meaning of “generic” to say

they literally have come to mean and to

designate entire classes of goods and

services.

BUYLIGHTFIXTURES.COM;

ENTERTAINMENT.COM;

DICTIONARY.COM;

TUTOR.COM; WEBMD; BESTBUY.COM.

Furthermore, while the PTO

expresses concern for “competitors operating

domain names such as ‘roomsbooking.com,’

‘hotelbooking.com,’

‘ebooking.biz,’”

and

ebooking.com, notably, none of these entities

opposed Booking.com’s applications when

they were published for opposition.

While many such trademarks may be

descriptive and unprotectable without proof

of secondary meaning (perhaps without

substantial proof of secondary meaning), in

this case there was overwhelming evidence

that

the

primary

significance

BOOKING.COM is not as a generic term for

all hotel reservation services but as a mark

identifying Booking.com as the particular

source of certain uniquely valued reservation

services.

For example, Booking.com

presented survey evidence “indicating that

74.8%

consumers

recognized

BOOKING.COM as a brand rather than a

generic service” (Pet’r’s App. at 6a), and in

this case (unlike any other) the PTO

expressly conceded that it is logically and

grammatically impossible to use the term

BOOKING.COM as a generic term for

anything (Pet’r’s App. at 166a). Nor did the

PTO offer any evidence to challenge the

expert testimony of Princeton linguistics

professor Sara Jane Leslie that as a matter

of settled linguistic science, it is impossible

for words to have meanings independent of

use. Pet’r’s App. at 86a. In contrast to the

evidence presented by Booking.com, the

District Court noted as “striking . . . the

absence of evidence that consumers or

producers use the term booking.com to

describe . . . hotel and travel reservation

services.” Pet’r’s App. at 86a.

It is true that, without overruling

Oppedahl & Larson, the Federal Circuit

more recently has affirmed, on their facts

and under a specific standard of review

inapplicable here, administrative decisions of

the PTO rejecting other .com marks, such as

“HOTELS.COM” and “MATTRESS.COM.”

In re Hotels.com, 573 F.3d 1300; In re

1800Mattress.com,

586

F.3d

1359.6

However, both the District Court and the

Fourth Circuit correctly distinguished these

cases as having been decided on their facts

and the different standards of review there

at issue. Pet’r’s App. at 23a & n.12, 74a. In

none of the cases cited by the PTO was there

an admission (by the PTO itself) that the

mark simply cannot be used generically; in

none was there an admissible consumer

survey confirming the primary significance

of the term was as a trademark; in none was

the mark in issue the leading brand in its

field; in none was there unrebutted scientific

evidence

confirming

the

theory

genericness was contrary to science. See In

re Hotels.com, 573 F.3d 1300; In re

1800Mattress.com, 586 F.3d 1359; In re Reed

But see In re Dial-A-Mattress

Operating Corp., 240 F.3d 1341 (Fed. Cir.

2001) (“Dial-A-Mattres” not used generically,

hence not generic).

Elsevier

Props.,

482

F.3d

1376;

Advertise.com, 616 F.3d 974. Nor does any

principle

jurisprudence

permit

adjudicating purely factual issues in one case

based on factual holdings in another where

the claimant was not even a party. And none

of these cases held that some class of

trademarks can be deemed generic as a

matter of law.

As noted, the PTO’s petition nowhere

even mentions the burden of proof it faced

here much less the standard of review7 in the

district court or on appeal. Even if the facts

in the cases cited by the PTO were anything

more than superficially similar to the facts

here, those cases did not overrule Oppedahl

& Larson (see supra note 3), and could not

possibly justify reversing the purely factual

determination in this case that the best7 Whether a trademark is generic is a

question of fact which the PTO bears the

burden of proving by “clear evidence.” See

Swatch AG, 739 F.3d at 155; In re Merrill,

Lynch, 828 F.2d at 1570. A court’s factual

findings, including on the question of

genericness, should not be disturbed unless

they are clearly erroneous. See Pet’r’s App.

at 7a; Pizzeria Uno Corp., 747 F.2d at 1526–

27.

known brand in its field is indeed entitled to

protection. Similarly, in Advertise.com, Inc.

v. AOL Advertising, Inc., the Ninth Circuit

merely held that AOL, in seeking a

preliminary injunction, failed to demonstrate

that it was likely to succeed on the merits.

616 F.3d 974, 981-82 (9th Cir. 2010). The

Court found that “Advertise.com is likely to

rebut the presumption of validity and prevail

on its claim that ADVERTISING.COM is

generic” for “online advertising” or “internet

advertising,” but at the same time the Court

did not “foreclose the possibility that AOL

might prove its case on a fully developed

record.” Id. Furthermore, unlike the present

case, even the limited factual record

specifically supported the conclusion that it

was grammatically possible to use the term

generically, as in “Could you refer me to an

advertising dot-com?” Id. at 978. Nor was

there a survey or other evidence in

Advertise.com that the claimed mark in

issue was in fact widely recognized as a

trademark – indeed as one of the top brands

in its field. In fact, the Ninth Circuit noted

that such evidence might alter the result. Id.

at 982 (“It is not inconceivable but certainly

highly unlikely that consumer surveys or

other evidence might ultimately demonstrate

that AOL's mark is valid and protectable.”).

There is thus no conflict with the factual

findings here. Nor is there any legal basis to

convert the factual issue of genericness into

one of law.

II.

FACTUAL BACKGROUND

The record here confirms that

Booking.com is one of the best-known travel

and accommodations services in the United

States (and the world), with unparalleled

recognition and millions of active followers

and users). For instance, referring only to

the evidence expressly cited by the courts

below, even as of September 2016,

Petitioner’s

BOOKING.COM

branded

website had long-since been generating

billions of dollars in U.S. revenues and

transactions. See Pet’r’s App. at 100a. Over

5 million Facebook members voluntarily

liked Booking.com, and approximately 5.4

million U.S. customers freely chose to

download its mobile application between

2014 and the close of evidence. See Pet’r’s

App. at 100a-103a. Over 1,200 U.S. news

articles referenced BOOKING.COM between

January 2015 and September 2016 alone.

See Pet’r’s App. at 100a-103a. Extensive

other evidence cited by the courts show

brand recognition. See Pet’r’s App. at 97a103a.

Although the mark BOOKING.COM

was initially approved for registration, the

PTO changed course, withdrawing its

approval and beginning a dispute that has

lasted since 2012.

In 2016, the PTO’s

administrative tribunal, the Trademark

Trial and Appeal Board (“TTAB”) concluded

“it is impossible to use BOOKING.COM in a

grammatically coherent way to refer

generically to anything,” and that “it is not

at all logical to refer to a type of product or

service as a ‘booking.com.’” Pet’r’s App. at

166a. Although there was also no evidence

that consumers had ever used the term

generically (as in “I logged on to my

‘booking.com’ to make a reservation), the

TTAB nonetheless concluded that the name

should be deemed generic because consumers

might nonetheless somehow “understand”

the term generically.

Booking.com thereafter sought de novo

review under Section 1071 in the District

Court for the Eastern District of Virginia.

Pet’r’s App. at 46a, 53a. Booking.com there

presented an unrebutted consumer survey

confirming that 74% of consumers of travel

services recognize BOOKING.COM as a

trademark. Pet’r’s App. at 88a-95a. It also

presented evidence of the vast extent of

consumer use and recognition of the brand

for travel services.

It showed that the

BOOKING.COM travel service was recently

picked by the research and analytics firm,

JD Power and Associates, as having the

highest customer satisfaction rate of any

travel site in the United States. Pet’r’s App.

at 98a, 53a. The PTO offered no evidence to

challenge

Appellee’s

showing

that

BOOKING.COM

enjoys

unparalleled

consumer loyalty in the travel industry and

has never been used generically for such

services. See Pet’r’s App. at 85a-87a, 102a.

Nor did the PTO challenge the evidence

submitted by the Princeton-based linguistics

expert that linguistic science refutes the

TTAB’s assumption that it is possible for

terms to acquire meaning when it is logically

and grammatically impossible actually to use

the terms that way. See Pet’r’s App. at 86a

& n.12, 53a. Despite bearing the burden to

prove genericness by clear evidence, the PTO

never offered any evidence to rebut such

scientific fact.

Booking.com further argued that to

deny protection to BOOKING.COM would

subvert the very purpose of the Lanham Act

of protecting consumers by inviting

competing businesses to deceive customers

by exactly copying the name and falsely

advertising who they are, while stripping

Booking.com of its power to prevent such

piracy and prevent consumer confusion.

To sustain its burden of proof, the

PTO also offered no direct evidence of the

primary meaning of BOOKING.COM to any

given class of consumers, such as a survey or

evidence of actual use. See Pet’r’s App. at

85a. Consistent with the TTAB finding that

it is impossible to use BOOKING.COM

generically, there is no evidence that any

other businesses offering travel services or

consumers using travel services have ever

referred to such services as “Booking.coms”

or even as “Bookings.” See Pet’r’s App. at

85a. Nor is there any evidence anyone has

ever used the word “booking” to denote a

class of travel services (e.g., “I just contacted

my booking to make a reservation”). The

PTO instead cited computer-generated

searches of character strings of third party

domain

names,

such

“instantworldbooking.com,” in which one

must hunt to find the characters “b-o-o-k-i-ng-.-c-o-m.” See Pet’r’s App. at 87a. As the

District Court noted, none of these sites use

the name BOOKING.COM generically

(Pet’r’s App. at 87a); nor is there any

evidence how many (if any) consumers have

even visited such sites.

The primary meaning of the word

“booking” alone in the dictionaries the PTO

cited is “an arrangement for a person or

group (such as a singer or band) to perform

at a particular place.” See Pet’r’s App. at

188a-189a.

The District Court agreed with

Booking.com that its mark is protectable.

Pet’r’s App. at 106a. The PTO appealed to

the Fourth Circuit, which, on February 4,

2019, affirmed that BOOKING.COM is a

protectable trademark. Pet’r’s App. at 25a.

In that proceeding, the PTO conceded that

BOOKING.COM enjoys secondary meaning.

Id.

III.

ARGUMENT

The

PTO

Misstates

the

Distinction Between Genericness

and Descriptiveness

The PTO notes the distinctions

between the five categories in which terms

are classified for the purpose of determining

distinctiveness and protectability of marks,

namely: (1) generic; (2) descriptive; (3)

suggestive; (4) arbitrary; and (5) fanciful.

See Abercrombie & Fitch Co. v. Hunting

World, Inc., 537 F.2d 4, 9 (2d Cir. 1976).

However, the PTO misstates the quantum

difference between descriptive trademarks

(such as “American Airlines,” “International

Business Machines,” “Coca-Cola,” “Citibank,”

“Bank

America,”

“Facebook,”

“Patents.com”)

that

communicate

information about the products or services,

and truly generic terms. The PTO fails to

mention that a generic term is not just “one

that refers to the genus of which the

particular product is a species,” but rather

one whose primary significance is identifying

such a genus – such as “computer” or “travel

agent” or “automobile.” Compare Pet’r’s Br.

at 3, with Ty Inc. v. Softbelly's Inc., 353 F.3d

528, 530 (7th Cir. 2003) (finding primary

significance of BEANIES was as a source

identifier when survey showed 60% believed

it was a source identifier and 36% thought it

was generic). The very fact that there are

other actual generic terms for the services

Booking.com provides (e.g., travel agent,

travel reservations service) sharpens the

contrast

with

the

trademark

BOOKING.COM and supports a finding of

non-genericness. See In re Dial-A-Mattress

Operating Corp., 240 F.3d 1341, 1346 (Fed.

Cir. 2001) (“There is no record evidence that

the relevant public refers to the class of

shop-at-home telephone mattress retailers as

‘1–888–M–A–T–R–E–S–S.’ ‘Telephone shopat-home mattresses’ or ‘mattresses by phone’

would be more apt generic descriptions.”).

Even if it is true that BOOKING.COM

communicates information that the service

provides travel reservation services, that at

most only proves descriptiveness, not

genericness, which requires considerably

more – namely that the primary meaning of

the term to consumers is to designate an

entire class of services. In re Chamber of

Commerce, 675 F.3d 1297, 1300 (Fed. Cir.

2012) (“A term is merely descriptive if it

immediately conveys knowledge of a quality,

feature, function, or characteristic of the

goods or services with which it is used.”).

Legally, there is a quantum difference

between generic terms, which cannot be

protected, from descriptive terms, such as

AMERICAN

AIRLINES

(clearly

communicating “an airline in America”) or

PATENTS.COM (clearly communicating

information about patents), Oppedahl, 373

F.3d at 1176-77, or STEELBUILDING.COM,

In re Steelbuilding.com, 415 F.3d at 1298.

Such terms simply require proof of secondary

meaning to be protected. And here, the PTO

already conceded the existence of secondary

meaning, which strongly indicates the term

is in fact primarily recognized as a

trademark.

Even

“suggestive”

marks

can

communicate information about the goods or

services but nonetheless are immediately

protectable on adoption, such as FIRE

CHIEF for a magazine for firefighters (as

distinct from “fire chiefs” themselves), H.

Marvin Ginn Corp. v. Int'l Ass'n of Fire

Chiefs, Inc., 782 F.2d 987, 991 (Fed. Cir.

1986), or SEATS, which is generic for chairs

themselves but cannot be generic for

reservation services, because it merely

describes the end result (a seat), not the

service itself. In re Seats, Inc., 757 F.2d 274,

277-78 (Fed. Cir. 1985).8 Likewise, in Elliot

v. Google Inc., the Ninth Circuit held that

Appellant

contends

that

BOOKING.COM is “suggestive” under Perini

Corp. v Perini Constr., Inc., 915 F.2d 121,

125 (4th Cir. 1990). Considered alone, the

element “BOOKING” ambiguously could

imply many disparate things. Pet’r’s App. at

64a. Even the meaning “reservation” does

not literally describe Appellant’s travel

agency services as such, but only the result

of one reservation-related service, just as

“SEATS” is protectable for being at least

descriptive if not suggestive. In re Seats,

757 F.2d at 277-78. The full trademark

BOOKING.COM is not even a known word

in the English language. Examples of marks

held suggestive include: Pom Wonderful LLC

v. Hubbard, 775 F.3d 1118 (9th Cir. 2014)

(“Pom” for pomegranate juice); Bose Corp. v.

Int’l Jensen, Inc., 963 F.2d 1517 (Fed. Cir.

1992) (“Acoustic Research” for loudspeakers);

Citibank, N.A. v. Citibanc Group, Inc., 724

F.2d 1540 (11th Cir. 1984) (“Citibank” for

urban bank).

“GOOGLE” can be generic for internet

searching (a verb) but not for “internet

search engines.” 860 F.3d 1151, 1162-63 (9th

Cir. 2017).

“[P]lacement of a mark on the fancifulsuggestive-descriptive-generic continuum is

a question of fact.” Oppedahl & Larson, 373

F.3d at 1173. As the District Court here

noted, precisely “because ‘categorizing

trademarks is necessarily an imperfect

science,’ it would be imprudent to adopt a

sweeping presumption denying trademark

protection to a whole category of domain

name marks in the absence of robust

evidence …” Pet’r’s App. at 74a (quoting

Fortune Dynamic, Inc. v. Victoria’s Secret

Stores Brand Mgmt., Inc., 618 F.3d 1025,

1033 (9th Cir. 2010)). The decision here of

the district court, upheld by the Fourth

Circuit, must now be upheld absent clear

error.

In this case, as in many others like it,

the primary significance (and hence nongenericness) of the mark was confirmed by

consumer survey evidence. See Berner Int'l

Corp. v. Mars Sales Co., 987 F.2d 975, 982

(3d Cir. 1993) (“Consumer surveys have

become almost de rigueur in litigation over

genericness”); Princeton Vanguard, LLC v.

Frito-Lay N. Am., Inc., 786 F.3d 960, 969

(Fed. Cir. 2015) (“We . . . have recognized

that ‘consumer surveys may be a preferred

method of proving genericness.’”).

The

survey here was conducted under settled

standards and in a format that is accepted

universally. Indeed, it was entirely within

the discretion of the District Court to admit

the “Teflon9” study presented here, a format

routinely accepted in litigations where

descriptive terms were found not generic.

Automobile Club of Southern Cal. v. The

Auto Club, Ltd., 2007 WL 704892 at *4 (C.D.

Cal. Mar 15, 2007) (AUTO CLUB); In re

Callaway Golf Co., 2001 WL 902004 at *7

(T.T.A.B. Aug 9 2001) (STEELHEAD for golf

clubs); Ty, Inc. v. Softbelly’s, Inc., 353 F.3d

528 (7th Cir. 2003) (BEANIES for beanbag

toys); Burger King Corp. v. Pilgrim’s Pride

Corp., 705 F. Supp. 1522, 1525-26, (S.D.

Fla. 1988), ), aff’d, 894 F.2d 412 (11th Cir.

1990)

(“CHICKEN

TENDERS);

Sportschannel Assocs. v. Commissioner of

Patents and Trademarks, 903 F. Supp. 418

A “Teflon” survey first instructs

respondents on the difference between

generic terms and trademarks, and then has

them categorize the mark in issue along with

other controls. E.I. DuPont de Nemours &

Co. v Yoshida Int’l, Inc., 393 F. Supp. 502

(E.D.N.Y. 1975).

(E.D.N.Y. 1995) (SPORTSCHANNEL for

cable channel devoted to sports); March

Madness Athletic Ass’n, LLC v. Netfire, Inc.,

310 F. Supp. 2d 786, 804-09 (N.D. Tex. 2003)

(MARCH MADNESS).

The PTO performed no survey of its

own (or at least offered none in evidence) to

support its burden of proof. The evidentiary

decision by the district court (affirmed by the

Fourth Circuit) to accept Booking.com’s

survey evidence here is not properly subject

to review now. PBM Prod., LLC v. Mead

Johnson & Co., 639 F.3d 111, 123 (4th Cir.

2011) (“[O]bjections based on flaws in

the survey's methodology

are

properly

addressed by the trier of fact.”); Honestech,

Inc. v. Sonic Sols., 430 F. App'x 359, 360 (5th

Cir. 2011) (“This court reviews a trial court's

decision regarding the admissibility of expert

testimony under an abuse of discretion

standard, and it will reverse the district

court only if ‘the ruling is manifestly

erroneous.’ ‘Manifest error is one that is

plain and indisputable, and that amounts to

a complete disregard of the controlling

law.’”).10

The PTO’s suggestion that there

was some defect in the survey because the

element “.com” is “functional” draws on

comments of the dissenting Judge Wynn in

the Fourth Circuit. However, the survey

itself demonstrates that consumers don’t see

BOOKING.COM as a non-generic mark

simply because it ends in “.COM.” The

survey

also

included

WASHINGMACHINE.COM, which 60% of

respondents thought was generic versus only

24% for BOOKING.COM. The dicta in Am.

Online, Inc. v. AT&T Corp., 243 F.3d 812,

823 (4th Cir.), cert dismissed, 534 U.S. 946

(2001), cited by the PTO, concerning the

functions served by the phrase “You Have

Mail” is at best an unusual application of a

doctrine applicable to the anticompetitive

nature of allowing companies form obtaining

perpetual, patent-like protection for a

product feature. As this Court explained in

TrafFix Devices, Inc. v. Marketing Displays,

Inc.:

Discussing

trademarks,

have said "'in general terms, a

product feature is functional,'

and

cannot

serve

trademark, 'if it is essential to

the use or purpose of the article

or if it affects the cost or quality

of the article.'" Qualitex, 514

U.S. at 165 (quoting Inwood

Laboratories, Inc. v. Ives

Laboratories, Inc., 456 U.S. 844,

850, n. 10, 72 L. Ed. 2d 606, 102

S. Ct. 2182 (1982)). Expanding

upon the meaning of this

phrase, we have observed that a

functional feature is one the

"exclusive use of [which] would

put competitors at a significant

nonreputationrelated

disadvantage." 514 U.S. at 165.

532 U.S. 23, 32 (2001).

However, even if functionality had any

relevance to word marks, the limitless

available URLs for travel sites defeats any

suggestion that competitors need to use

BOOKING.COM. Merely that a URL has “a

function” is consistent with the name also

being a trademark (e.g., AMAZON.COM).

Indeed, to the extent that a “.COM” address

functions as a means of identifying a

particular webpage, all trademarks function

in a similar fashion by identifying a source –

that is not the type of function that the

functionality doctrine is designed to address.

It is also impermissible to dissect the mark

BOOKING.COM into components. The very

Moreover, the case cited by the PTO,

Hunt Masters, Inc. v. Landry’s Seafood Rest.,

Inc., 240 F.3d 251 (4th Cir. 2001), upholding

a finding that an already (and admittedly)

non-distinctive restaurant name, “Crab

House,” was generic does not support a

finding that the Fourth Circuit committed an

abuse of discretion in agreeing with the

district court that Booking.com’s survey was

admissible. In Hunt Masters, the plaintiff

had earlier admitted the ubiquitous name

“crab house” was unprotectable when it

disclaimed the term during prosecution of its

trademark. Id. at 253. Since the term was

already generic, it could not later be removed

from the public domain. See id. at 255. The

court nowhere suggested that proper “Teflon”

surveys could be rejected any time there is a

dispute about whether a mark is generic or

not. Any such rule would be circular in first

simply assuming a mark is generic on some a

priori grounds. As the District Court and the

Fourth Circuit correctly found, there is no

evidence the mark BOOKING.COM was

commonly used (or used at all) before its

association with Booking.com. Pet’r’s App.

point of all of the evidence of consumer

recognition of BOOKING.COM is to show

that the name means far more than simply

some web address.

at 17a, 91a-92a. To the contrary, the PTO

admitted it was logically and grammatically

impossible for the name to refer to anyone

other than Booking.com.

More broadly, the error in the PTO’s

challenge to Booking.com’s survey evidence

is its circular reasoning to escape its burden

of proof. Although it is true that once a mark

is held generic, most courts will thereafter

refuse to remove the mark from the public

domain no matter how much proof of

secondary meaning is offered, that is not the

question here, where the coined term

BOOKING.COM has never been held generic

and there been no admission by Booking.com

that it lacks distinctiveness. And no case

(including any of those cited by the PTO) has

ever held that, in the first instance, a mark

can be deemed generic as a matter of law,

irrespective of the evidence, so as to preclude

the finder of fact from even assessing

whether the primary significance of the

mark to consumers is or is not to refer to the

specific trademark owner or to an entire

class of goods or services. Here, the PTO

simply asks this Court to ignore all of the

evidence that consumers do in fact recognize

BOOKING.COM as a trademark (indeed, as

perhaps the best-known name in the field of

on-line reservation services) to satisfy an a

priori conclusion that some undefined class

of trademarks should be deemed generic as a

matter of law. As noted, no precedent has

ever so-held, and the PTO has not even

attempted to define the supposed legal rule it

wishes to erect to avoid its burden of proof.

Is STAPLES.COM no longer protectable?

What about COCA-COLA? The Lanham Act

creates no such special (inferior) class of

trademarks, and no case has ever held that a

fact-finder is not even permitted to consider

survey evidence or other proofs to assess

consumer understanding so as to relieve the

party with the burden of proof of its

responsibilities.

Denying

Registration

BOOKING.COM Frustrates the

Purposes of the Lanham Act

The PTO speculates that allowing the

best-known internet travel service to register

its name will somehow lead to abusive

practices in the form of challenges to other

domain names incorporating the character

string

“b-o-o-k-i-n-g-.-c-o-m”

such

“roomsbooking.com,” “hotelbooking.com,” and

“ebooking.biz.” See Pet’r’s Br. at 16. Just as

no principle of jurisprudence permits

deciding the factual issue of genericness

merely by analogy to other precedents, no

principle of jurisprudence permits the denial

of trademark protection based only on such

bare speculation of possible future improper

motives. Not only does the PTO present no

evidence that Booking.com is contemplating

infringement suits against such sites, or that

such suits would be successful, but contrary

to the PTO’s theory of significant risk to

these websites, notably, none of these

entities opposed Booking.com’s applications

when they were published for opposition.

The PTO’s inability to demonstrate any

significant risk is entirely predictable if one

pauses to consider the actual standard to

prove likelihood of confusion (including

readily available defenses) as well as the

PTO’s own admission that it is impossible to

use the name BOOKING.COM to refer to

anything other than Booking.com’s services.

Enacting the Lanham Act in 1946,

Congress recognized two reasons to protect

trademarks: (1) “to protect the public so it

may be confident that, in purchasing a

product bearing a particular trade-mark

which it favorably knows, it will get the

product which it asks for and wants to get”;

and (2) “where the owner of a trade-mark

has spent energy, time, and money in

presenting to the public the product, he is

protected in his investment from its

misappropriation by pirates and cheats.” S.

Rep. 1333, at 1 (1946), reprinted in 1946 U.S.

Code & Cong. Serv. 1274, 1274. Qualitex Co.

v. Jacobson Prods. Co., 514 U.S. 159, 163-164

(1995) (“[B]y preventing others from copying

a source-identifying mark, [trademark law]

reduce[s] the customer’s costs of shopping

and making purchasing decisions” by

assuring them they can rely on known

marks).11 When Congress confirmed the

meaning of the term “generic” in 1984, it

explained:

Because of their importance to

our

nation’s

commerce,

trademarks long have been

protected from appropriation

and misuse by others, both to

protect the consumer from

deception and confusion and to

insure that producers are

rewarded for their investment

the

manufacture

and

marketing of their product.

“The trademark laws exist not to

‘protect’ trademarks, but . . . to protect the

consuming

public

from

confusion,

concomitantly protecting the trademark

owner’s right to a non-confused public.”

James Burroughs, Ltd. v. Sign of the

Beefeater, Inc., 540 F.2d 266, 276 (7th Cir.

1976).

S. Rep. No. 98-627, at 2, reprinted in 1984

U.S.C.C.A.N. 5718, 5719. Refusing to protect

BOOKING.COM defeats the very purposes of

the Lanham Act by encouraging third parties

to trade on plaintiff’s singular reputation

and blatantly mislead consumers, including

by falsely advertising themselves as being

part of Booking.com or otherwise directly

misleading consumers.

Dozens of accommodations services

compete actively with Booking.com without

any need to use the name. The PTO also

asserted that registering BOOKING.COM

might “deprive competing manufacturers of

the right to call an article by its name”

(Pet’r’s Br. at 19), which is impossible to

reconcile with the PTO’s admission that it is

logically impossible to use the name to

denote travel agency services. Where, as

here, there are ample readily available terms

for the genus of services, such as “travel

agency” or “travel site” or “accommodation

site,” this is positive evidence that the

disputed term is not generic.

Elliot v.

Google, 860 F.3d at 1162 (“Elliott must show

that there is no way to describe ‘internet

search engines’ without calling them

‘googles.’”), citing Q-TIPS, Inc. v. Johnson

& Johnson, 108 F. Supp. 845, 863 (1952)

(distinguishing the claimed mark, Q-TIPS,

from

the

descriptor,

“double-tipped

applicator”); In re Dial-A-Mattress Operating

Corp., 240 F.3d 1341, 1346 (Fed. Cir. 2001)

(“Telephone shop-at-home mattresses” or

“mattresses by phone” more apt generic

descriptions than “1-888-M-A-T-R-E-S-S”).

Booking.com’s competitors such as Orbitz,

Expedia, Travelocity, Trip Advisor all seem

quite able to provide travel services under

other trademarks without any need to use

BOOKING.COM descriptively, much less

generically.

the

marketplace,

BOOKING.COM

uniquely

identifies

Booking.com and its services.

Registering BOOKING.COM will have

no effect on the burden Booking.com would

have to prove likelihood of confusion, which

typically turns on a multipart test all

jurisdictions follow, based on the seminal

decision, Polaroid v Polarad, 287 F.2d 492,

493 (2d Cir. 1961). For the PTO to speculate

whether or if Booking.com might challenge

hypothetical use of names such as

“roomsbooking.com” or “hotelbooking.com,”

asks this Court to imagine unknown factual

scenarios as to how closely a hypothetical

third party was copying the overall

appearance of the Booking.com website; how

competitive such a service might be; what

parts of the market are targeted and how

sophisticated are the users; what is the

intent of the hypothetical user and whether

there is evidence of actual confusion. Nor

would

registration

the

mark

BOOKING.COM deprive third parties of the

right to make descriptive fair use of the word

“booking”

–

for

travel,

theatrical

engagements, or other uses. See 15 U.S.C.

§ 1115(b)(4); KP Permanent Make-Up, Inc. v.

Lasting Impression I, Inc., 543 U.S. 111

(2004). Denying registration will only free

unscrupulous competitors to prey on its

millions of loyal consumers by falsely

advertising as “Booking.com” or making

deceitful direct promotions.

Given the

extraordinary popularity of Booking.com,

such risks are substantial.

Judge Posner noted in Ty, Inc. v.

Softbelly’s Inc., that “[t]o determine that a

trademark is generic and thus pitch it into

the public domain is a fateful step.” 353 F.3d

at 531. For the PTO to conclude that the

consumer-ranked

top

accommodations

website with literally millions of active

followers and a 74% recognition rate as a

brand is not permitted to protect the trust

reposed in the service by millions of loyal

customers or the millions of dollars it has

invested in its name is a step that should not

be lightly taken. It is entirely unsupported

by the evidence and frustrates the very

purpose of the Lanham Act

IV.

CONCLUSION

For the foregoing reasons, the PTO

petition for certiorari should be denied.

Dated: August 7, 2019

Respectfully submitted,

FOLEY & LARDNER LLP

By: /s/ Jonathan E. Moskin

Jonathan E. Moskin

90 Park Avenue

New York, NY 10016

jmoskin@foley.com

Telephone: (212) 682-7474

Facsimile: (212) 687-23299

and

Eoin Connolly

3000 K St. NW, Suite 600

Washington, D.C. 20007

econnolly@foley.com

Telephone: (202) 672-5300

Facsimile: (202) 672-5399

This is a copy of a public record, reproduced as it was published. It is not legal advice, and it may not be the version a court would rely on. Check the official source before you cite it.