Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA740968
`
`Filing date:
`
`04/19/2016
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`Applicant
`
`79122366
`
`Booking.com B.V.
`
`Applied for Mark
`
`BOOKING.COM
`
`Correspondence
`Address
`
`Submission
`
`Attachments
`
`Filer's Name
`
`Filer's e-mail
`
`KATHERINE CALIFA
`FOLEY & LARDNER LLP
`90 PARK AVE
`NEW YORK, NY 10016-1314
`UNITED STATES
`IPdocketing@foley.com, jmoskin@foley.com, kcalifa@foley.com, sschoep-
`fer@foley.com
`
`Appeal to District Court
`
`Notice of Civil Action - BOOKING.com.pdf(719871 bytes )
`
`Jonathan E. Moskin
`
`ipdocketing@foley.com, jmoskin@foley.com, kcalifa@foley.com, sschoep-
`fer@foley.com
`
`Signature
`
`Date
`
`/jonathan e. moskin/
`
`04/19/2016
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`096981-0108 et al
`
`
`
`
`
`, Serial No. 85/485,097
`In re
`Filed by Booking.com B.V. on Dec. 1, 2011
`Examining Attorney: Caitlin Watts-Fitzgerald, Law Office 111
`
`In re: BOOKING.COM, Serial No. 79/114,998 ]
`Filed by Booking.com B.V. on June 5, 2012
`Examining Attorney: Sharon A. Meier, Law Office 112
`
`In re: BOOKING.COM Stylized letters, Serial No. 79/122,365
`Filed by Booking.com B.V. on November 7, 2012
`Examining Attorney: Nelson B. Snyder III, Law Office 107
`
`In re: BOOKING.COM Design and Stylized letters, Serial No. 79/122,366
`Filed by Booking.com B.V. on November 7, 2012
`Examining Attorney: Nelson B. Snyder III, Law Office 107
`
`NOTICE OF CIVIL ACTION
`
`
`Pursuant to 37 C.F.R. § 2.145(c)(4) and Trademark Trial and Appeal Board Manual of
`
`
`
`
`
`Procedure § 903.01, Applicant hereby notifies the Board that on April 15, 2016, Applicant filed a
`
`complaint in the United States District Court for the Eastern District of Virginia, Booking.com
`
`B.V. v. Lee, 1:16 CV 425 (LMB)(IDD), attached hereto under Exhibit A, seeking judicial review
`
`of the Board's decisions rendered on February 18, 2016 in the above-captioned proceedings. The
`
`action, filed pursuant to 15 U.S.C. § 1071(b), is Civil Action No. 1:16-cv-00425-LMB-IDD.
`
`
`Dated: April 19, 2016
`
`
`
`
`
`
`
`Respectfully submitted,
`FOLEY & LARDNER LLP
`
`/s/ Jonathan E. Moskin
`Jonathan E. Moskin, Esq.
`Katherine Califa, Esq.
`90 Park Avenue
`New York, NY 10016-1314
`Phone: (212) 338-3572
`E-mail: IPDocketing@foley.com
`
`
`
`4821-8535-4288.1
`
`

`
`
`
`EXHIBIT A
`EXHIBIT A
`
`

`
`-
`- F0 L EY
`
`FOL EV 8'
`
`'-A R D N E R up
`
`V[A HAND DELIVERY
`
`..
`
`N} ‘E
`
`E D ATTORNEYS AT LAW
`WASHINGTON HARBOUR
`
`3000 K STREET, N.W.
`suns 500
`WASHINGTON, 0.0. 20007-5109
`202.672.5300 TEL
`[5 ID 3:‘i%>fi72.5399FAX
`FOLEY.COM
`
`C’ "UV 0
`-
`I
`.,. ,,
`ITER'$ DIRECT LINE
`L/if
`‘ U“? SrRlCI“LOdi1<i§'.945.6054
`4 _ .. 4.0.
`, I,/I, N1. “I‘,_1‘3kapatkin@foIey.com EMAIL
`CLIENT/MATTER NUMBER
`096981-0108
`
`April 15, 2016
`
`Clerk of the Court
`
`U.S. District Court for the
`
`Eastern District of Virginia, Alexandria Div.
`Albert V. Bryan U.S. Courthouse
`401 Courthouse Square
`Alexandria, VA 22314
`
`Re:
`
`New Complaint — Booking.com B. V. v. Michelle K. Lee, in her
`official capacity as Director ofthe United States Patent and
`Trademark Oflice and the United States Patent and Trademark
`Oflice
`
`Dear Sir or Madam:
`
`Enclosed for filing with the Court please find the following:
`
`(1)
`
`Civil Cover Sheet;
`
`(2)
`
`(4)
`
`(5)
`
`(6)
`
`one original and four service copies of the Complaint;
`
`four original Summonses and a service copy of each Summons;
`
`the corporate disclosure statement;
`
`check in the amount of $400.00 to cover the filing fee.
`
`Please execute and seal the Summonses and return them to our messenger; we will arrange
`for service of process.
`
`Additionally, I have enclosed one extra copy of all the documents. Please file stamp these
`and return them to our messenger for our files.
`
`Thank you for your assistance with this matter.
`
`BOSTON
`BRUSSELS
`CHICAGO
`DETROIT
`
`JACKSONVILLE
`LOS ANGELES
`MADISON
`MIAMI
`
`MILWAUKEE
`NEW YORK
`ORLANDO
`SACRAMENTO
`
`SAN DIEGO
`SAN FRANCISCO
`SHANGHAI
`SILICON VALLEY
`
`TALLAHASSEE
`TAMPA
`TOKYO
`WASHINGTON, D.C.
`
`

`
`IFOLEY
`
`FOLEY & LARDNER LLP
`
`April 15, 2016
`Page 2
`
`Enclosures
`
`Sincerely
`
` \
`
`Brian J. Kapatkin
`(VSB No. 75061)
`
`

`
`-
`LED
`CIVIL COVER SHEET
`mi «Rev. mm
`The JS 44 civil cover sheet and the infonnation contained herein neither replace nor suppjlernent the l'il_in and service ofpleadings or other papers as required by law. except as
`provided by local rules of court. This fonn. approved by the Judicial Conterence of the nited States in cptember I974. IS required for the use of the (. Ierk of Court for the
`purpose of initiating the civil docket sheet.
`(SEE INSTRUCTIONS ON NEXT PAGE OF THIS FORM.)
`H
`
`Fi
`
`-
`
`I.
`
`PLAINTIFFS
`
`(a)
`Booking.com B.V.
`(b) County of Residence ot'First Listed Plaintiff
`(EXCEPTIN u.s. PLAINTIFF cases)
`
`
`
`DEFENDANTS
`
`-
`
`‘
`
`r
`
`it
`
`I ':
`
`MICHELLE K. LEE, in her official capacity as Di%ctc3'-'o51l‘IP
`U.S.P.T.O. and the U.S.P.(fLQ.RK U0
`1
`- _
`U
`,
`Ir.
`C’)!
`_
`I
`County of Residence of First Listed‘De’fendant':i
`.
`—'
`(IN us. PLAINTIFF CASES MI I‘)
`nil
`NOTE:
`IN LAND CONDEMNATION CASES. USE THE LOCATION OF
`THE TRACT OF LAND INVOLVED.
`
`(C) Attorneys (Firm Name, Address, and Telephone Number)
`
`Att°meY5 (I/K"0W")
`
`Foley & Lardner LLP, 3000 K Street. N.W., Suite 600, Washington, D.C.
`20007, 202-672-5300, Brian J. Kapatkin
`
`H.
`
`OFJU (Place an "X"in One Box Only)
`
`O I US. Government
`Plaintiff
`
`0 3
`
`Federal Question
`((1.5. Government Nor a Party)
`
`"I. SHIP OF PRINCIPALP (Place an "X" in One Boxfor Plainrifl
`(For Diversity Cases Only)
`and One Boxfor Defendant)
`PTI-‘
`PTF
`DEF
`D I
`E]
`Cl 4
`
`DEF
`Cl
`
`I
`
`Incorporated or Principal Place
`of Business In This State
`
`4
`
`Citizen of This State
`
`52 U.S. Govenunent
`Defendant
`
`Cl 4 Diversity
`(Indicate Ciri‘:ensIir'p ofParties in Ilem III)
`
`Citizen ofAnother State
`
`CI 2
`
`D 2
`
`Incorporated and Principal Place
`of Business In Another State
`
`CI
`
`5
`
`CI 5
`
`0 6
`
`Cl 6
`
`
`
`
`
`CI 375 False Claims Act
`D 376 Qui Tam (31 USC
`3729(a))
`D 400 State Reapportionment
`Cl 410 Antitrust
`D 430 Banks and Banking
`0 450 Commerce
`El 460 Deportation
`0 470 Racketeer Influenced and
`Corrupt Organimtions
`0 480 Consumer Credit
`D 490 Cable/Sat TV
`El 850 Securities/Commodities/
`Exchange
`D 890 Other Statutory Actiom
`Cl 891 Agricultural Acts
`D 893 Enviromriental Matters
`Cl 895 Freedom oflnfonnation
`Act
`D 896 Arbitration
`Cl 899 Administrative Procedure
`Act/Review or Appeal of
`Agency Decision
`El 950 Constitutionality of
`State Statutes
`
`
`
`0 870 Taxes (U.S. Plaintiff
`or Defendant)
`Cl 871 IRS—Third Party
`26 USC 7609
`
`
`
`
`
`
`
`‘
`
`
`
`IV.
`
`OF
`
`(Place an “X"in One Box On! )
`
`
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`
`
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`
`
`
`
`
`
`
`El
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`
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`
`
`
`
`U 3
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`D 3
`
`Foreign Nation
`
`Citizen or Subject ofa
`I-‘orei _ Coun
`
`
`.1|.:i'->lll|l'\'I‘iI\;
`
`D 625 Drug Related Seizure
`
`of Property 21 USC 881
`
`D 422 Appeal 28 USC I58
`C] 423 Withdrawal
`28 USC I57
`
`
`
`
`
`
`
`
`
`
`
`ll ‘.4 3 iv
`0 820 Copyrights
`El 830 Patent
`5 840 Trademark
`
`
`
`
`%§f{i1’¢'i7.‘lW~‘i7I'0TlFlF'!i'x:1"<1I.*?'uia§
`0 861 HIA (D955)
`Cl 862 Black Lung (923)
`Cl 863 DIWC/DIWW (405(g))
`El 864 SSID Title XVI
`0 865 RSI (405(g))
`
`
`
`
`
`PERSONAL INJURY
`PERSONAL INJURY
`I I0 Insurance
`C]
`CI 3l0 Airplane
`0 I20 Marine
`D 365 Personal Injury -
`13 3 I5 Airplane Product
`CI I30 Miller Act
`Product Liability
`Liability
`0 I40 Negotiable Instrument
`D 367 Health Care]
`Cl 150 Recovery ofOverpayment D 320 Assault. Libel &
`Phamiaceutical
`& Enforcement ofJudgment
`Slander
`Personal Injury
`0 ISI Medicare Act
`0 330 Federal Employers‘
`Product Liability
`0 I52 Recovery ofDefaulted
`Liability
`0 368 Asbestos Personal
`Student Loans
`0 340 Marine
`Injury Product
`(Excludes Veterans)
`D 345 Marine Product
`Liability
`0 I53 Recovery ofOverpayment
`Liability
`PERSONAL PROPERTY 0 7l0 Fair Labor Standards
`of Veteran's Benefits
`CI 350 Motor Vehicle
`CI 370 Other Fraud
`Act
`0 I60 Stockholders’ Suits
`CI 355 Motor Vehicle
`0 371 Truth in Lending
`Cl 720 Labor/Management
`D 190 Other Contract
`Product Liability
`D 380 Other Personal
`Relations
`CI
`I95 Contract Product Liability 0 360 Other Personal
`Property Damage
`0 740 Railway Labor Act
`O 196 Franchise
`Injury
`0 385 Property Damage
`CI 751 Family and Medical
`[3 362 Personal Injury -
`Product Liability
`Leave Act
`
`Medical Mal =
`tice
`0 790 Other Labor Litigation
`-.
`~
`_
`'
`«I
`'
`'
`_ El 791 Employee Retirement
`
`
`
`
`Cl 2 I0 Land Conde
`CI 440 0t.lier Civil Rights
`Habeas Corpus:
`Income Security Act
`CI 220 Foreclosure
`Cl 441 Voting
`0 463 Alien Detainee
`
`0 230 Rent Lease & Ejectment
`E! 442 Employment
`0 5 l0 Motions to Vacate
`
`Cl 240 Torts to Land
`O 443 Housing!
`Sentence
`D 245 Tort Product Liability
`Accommodations
`D 530 General
`D 290 All Other Real Property
`CI 445 Amer. w/Disabilities - CI 535 Death Penalty
`
`0 462 Naturalization Application
`Employment
`Other:
`
` CI 446 Amer. w/Disabilities - El 540 Mandamus &. Other 0 465 Other Immigration
`
`Actions
`Other
`D 550 Civil Rights
`
`
`0 448 Education
`0 555 Prison Condition
`
`C) 560 Civil Detainee -
`
`Conditions of
`
`Confinement
`
`V.
`(Place an "X" in One Box Only)
`El 4 Reinstated or D 5 Transferred fiom III 6 Multidistrict
`3 Remanded from
`XI Original
`I3 2 Removed from
`5 EC!
`Reopened
`?n0t:.ig;I' District
`Litigation
`Appellate Court
`Proceeding
`State Court
`
`
`Cite the U.S. Civil Statute underwhich you are filing (Do notcirejurisdlcrionalsraruresunlessdiversity):15 USC. Section 10710)) VI. CAUSE OF ACTION
`Brief description ofcause:
`.
`_
`,
`.
`_
`,
`_
`Civil action challenging decision of U.S. Trademark Tnaland Appeal Board
`
`0 CHECK IF THIS IS A CLASS ACTION
`DEMAND s
`CHECK YES only ifdemanded in complaint:
`VII. REQUESTED [N
`UNDER RULE 23. F.R.Cv.P-
`COMPLAINT:
`JURY DEMAND:
`D Yes
`No
`__:_
`VIII. RELATED CASE(S)
`IF ANY
`
`
`
`
`
`DATE
`
`,
`
`(See i"s'"'°'i°'"):
`
`DOCKET NUMBER
`JUDGE
`
`SIGNATURE OF ATTORNEY OF RECORD
`
`FOR 0 I-‘ICE USE ONLY
`
`if / 711,014 ’
`
`RECEIPT #
`
`AMOUNT
`
`APPLYING IFP
`
`JUDGE
`
`MAG. JUDGE
`
`

`
`UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT or VIRGINIA
`Alexandria Division
`CLERK
`
`2211:; AP”
`" I 5 D 3; 3 5
`
`Civil Action No.
`
`l I lg ‘CTNQ5
`(mu 24709
`
`) ) ) ) ) ) ) ) ) ) ) ) ) ) )
`
`)
`)
`)
`)
`)
`
`) ) ) ) ) ) ) ) ) ) ) ) )
`
`BOOKING.COM B.V.,
`Herengracht 597, 1017 CE
`Amsterdam, Netherlands
`
`Plaintiff,
`
`V.
`
`MICHELLE K. LEE,
`in her official capacity as Director of the
`United States Patent and Trademark Office; and
`
`THE UNITED STATES PATENT AND
`TRADEMARK OFFICE
`
`Serve:
`Office of the General Counsel
`U.S. Patent and Trademark Office
`Madison Bldg. East, Room 1OB20
`600 Dulany Street
`Alexandria, VA 22314
`
`Attorney General of the United States
`Main Justice Building
`10th & Constitution Ave, NW
`Washington, DC 20530
`
`U.S. Attorney for the Eastern Dist. of Va.
`2100 Jarnieson Avenue
`
`Alexandria, VA 22314
`
`Defendants.
`
`
`COMPLAINT
`
`Plaintiff Booking.com B.V. (“Plaintiff”), by its undersigned attorneys, Foley & Lardner
`
`LLP, for its Complaint against defendants Michelle K. Lee, in her official capacity as the
`
`481 7-4239-6463.1
`
`

`
`Director of the United States Patent and Trademark Office (the “Director”), and the United
`
`States Patent and Trademark Office (the “PTO”), alleges as follows:
`
`PARTIES, JURISDICTION AND VENUE
`
`1.
`
`Booking.com B.V. is a Dutch limited liability company with an office at
`
`Herengracht 597, 1017 CE Amsterdam, Netherlands.
`
`2.
`
`Michelle K. Lee is the Director of the U.S. Patent and Trademark Office with an
`
`address at P.O. Box 1450, Alexandria, Virginia 22313-1450.
`
`3.
`
`The PTO is a federal agency within the United States Department of Commerce.
`
`The agency is located at 600 Dulany Street, Alexandria, Virginia 22314.
`
`4.
`
`This Court has jurisdiction over the subject matter of this action pursuant to
`
`Section 21(b) of the U.S. Trademark Act of 1946 (the “Lar1ham Act”), as amended, 15 U.S.C.
`
`Sec. 1071(b), which provides that a party dissatisfied with a final decision of the Trademark
`
`Trial and Appeal Board (“TTAB”) may institute a new civil action in a Federal District Court
`
`challenging such decision. This Court also has subject matter jurisdiction pursuant to 28 U.S.C.
`
`Sec. 133 1.
`
`5.
`
`Venue is proper in this district pursuant to 28 U.S.C. Sec. 1391(e)(l)(A).
`
`FACTUAL BACKGROUND
`
`6.
`
`Booking.com operates one of the best known travel and accommodations sites in
`
`the world under the trademark BOOKING.COM, with among the most loyal consumer following
`
`for such travel and accommodations services.
`
`7.
`
`Plaintiff has been using the trademark BOOKING.COM since at least as early as
`
`2006, approximately ten years, before which time it used the similar mark BOOKINGS .NL since
`
`at least as early as 1997.
`
`4817-4239-6463.1
`
`

`
`8.
`
`Plaintiff has used the trademark BOOKING.COM extensively in the United
`
`States and around the world and has spent millions of dollars on advertising in the United States,
`
`including advertising on dozens of national television charmels, in movie theaters across
`
`America, and on highly popular Internet charmels.
`
`9.
`
`Through its extensive advertising, Plaintiffs BOOKING.COM advertisements
`
`have reached hundreds of millions of Americans over many years.
`
`10.
`
`Plaintiff has invested enormous resources into developing a strong brand identity
`
`and superior service and, as a result, has acquired significant consumer goodwill in its
`
`BOOKING.COM trademark.
`
`1 1.
`
`Plaintiffs BOOKING.COM branded website receives millions of unique visitors
`
`from the United States per month.
`
`12.
`
`Over 1,000,000 room nights are reserved through Plaintiffs BOOKING.COM
`
`service every day.
`
`13.
`
`On the social media website, Facebook.com, over 4.5 million people have “liked”
`
`BOOKING.COM.
`
`14.
`
`On the micro-blogging site Twitter, over 92,400 people are “following” the
`
`BOOKING.COM brand.
`
`15.
`
`Millions of Americans have affirrnatively sought to join Plaintiffs
`
`BOOKING.COM mailing list, demonstrating significant consumer loyalty.
`
`16.
`
`Plaintiffs BOOKING.COM branded website was recently picked by JD Power
`
`and Associates, a premier research and analytics firm, as having the highest customer satisfaction
`
`rate of any travel site in the United States.
`
`4817-4239-6463.1
`
`

`
`17.
`
`Plaintiff’s BOOKING.COM branded website and related offerings have won
`
`numerous other industry awards including, among others, recent “Gold” level and “Silver” level
`
`Adrian awards for various advertising campaigns from Hospitality Sales & Marketing
`
`Association International, the hospitality industry’s leading advocate for intelligent, sustainable
`
`hotel revenue growth, a 2015 “Gold” level Effie award in Travel and Tourism from the North
`
`America Effie Awards which honor the most effective marketing campaigns in North America,
`
`and “Best Mobile Site” and “Best Tablet App” awards from Mobile Travel & Tourism.
`
`U.S. Trademark Application Histo;v_
`
`18.
`
`On December 1, 2011, Booking.com filed a federal trademark application based
`
`L»: on use, for the mark
`
`_ BOOKING
`
`__
`
`, Serial No. 85/485,097 for:
`
`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 intemet.
`
`Class 43: Making hotel reservations for others in person and via the intemet; 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.
`
`19.
`
`On June 5 , 2012, Booking.com filed a federal trademark application under the
`
`Madrid Protocol for the mark BOOKING.COM, Serial No. 79/114,998, for:
`
`4817-4239-6463.1
`
`

`
`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 hotel room reservation
`
`services and resort hotel reservation services and providing online hotel and resort hotel
`
`room reservation services; providing information about hotels, holiday accommodations
`
`and resorts 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.
`
`20.
`
`On November 7, 2012, Booking.com filed a federal trademark application under
`
`the Madrid Protocol for the mark B°°k'ng'C°m , Serial No. 79/122,365, for:
`
`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
`
`4817-4239-6463.1
`
`

`
`room reservation services; providing information about hotels, hotel 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.”
`
`21.
`
`On November 7, 2012, Booking.com filed a federal trademark application under
`
`the Madrid Protocol, for the mark, Serial No. 79/122,366, for:
`
`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
`
`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.
`
`22.
`
`On October 13, 2012, Application Serial No. 85/485,097 was approved for
`
`publication by the PTO.
`
`23.
`
`After Application Serial No. 85/485,097 was approved for publication, it was
`
`unexpectedly withdrawn from publication on November 28, 2012, at which time the PTO issued
`
`an Office Action refusing registration on the dual grounds the mark is either merely descriptive
`
`for the identified services pursuant to 15 U.S.C. Sec.§ 1052(e)(1) or is generic for the identified
`
`services.
`
`24.
`
`In due course, similar Office Actions issued for applications Serial Nos.
`
`79/114,998, 79/122,365 and 79/122,366, rejecting each application on the same alternate grounds
`
`of mere descriptiveness or genericness.
`
`4817-4239—6463.1
`
`

`
`25.
`
`Following a series of responses and fiirther Office Actions, final refiisals were
`
`issued for all four applications on the same dual grounds.
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`26.
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`On April 28, 2014, May 19, 2014, and October 13, 2014, Plaintiff filed Notices of
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`Appeal with the Trademark Trial and Appeal Board (“TTAB”).
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`27.
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`On December 12, 2014, upon Plaintiffs request, the TTAB consolidated all four
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`appeals.
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`The PTO Decision
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`28.
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`On February 18, 2016, following briefing and oral argument, the TTAB issued
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`three orders affirming the refusal to register Plaintiffs BOOKING.COM marks on the asserted
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`grounds that the mark BOOKING.COM is generic or, in the alternative, that BOOKING.COM is
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`merely descriptive and Plaintiff had failed to prove the mark had acquired secondary meaning.
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`(The TTAB issued a combined Order for Application Serial No. 79/122365 and Application
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`Serial No. 79/122366).
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`29.
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`A generic term “is the common descriptive name of a class of goods or services.”
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`Princeton Vanguard, LLC v. Frito-LayN. Am., Inc., 786 F.3d 960, 965 (Fed. Cir. 2015).
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`30.
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`A generic term is one that designates an entire class of goods or services, rather
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`than the producer of those goods or services.
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`31.
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`In denying Booking.com’s appeal, the TTAB erred in defining the relevant class
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`of goods or services by holding that BOOKING.COM is generic for a type of service the TTAB
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`called “hotel room reservation services and other lodging services reservation services, with
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`related information, advice and consultancy, including such services provided online.”
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`32.
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`The TTAB’s proffered genus of services, namely “hotel room reservation services
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`and other lodging services reservation services, with related information, advice and consultancy,
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`including such services provided online,” is not a coherent genus or class of services at all;
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`rather, it is a gerrymandered and serpentine subset of several distinct services falling under the
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`umbrella of travel agency services.
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`33.
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`A more accurate summary of the type of services offered by Booking.com (and its
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`proposed definition of the genus of its services) was and is simply “travel agency services.”
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`34.
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`The TTAB itself acknowledged that the definition of a travel agency is “a
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`business that accommodates travelers, as by securing tickets, arranging for reservations, and
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`giving information.”
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`35.
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`Booking.com is a business that accommodates travelers, as by arranging for
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`reservations, and giving information.
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`36.
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`In denying Booking.com’s appeal, the TTAB correctly acknowledged that a
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`finding of genericness must be supported by “clear evidence” that the “primary significance” of
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`the term is generic.
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`37.
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`In denying Booking.com’s appeal, the TTAB correctly acknowledged that
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`genericness is an issue of fact that must be decided on the facts of each case.
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`38.
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`In denying Booking.com’s appeal, the TTAB correctly acknowledged that “it is
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`impossible to use BOOKING.COM in a grammatically coherent way to refer generically to
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`anything.”
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`39.
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`In denying Booking.com’s appeal, the TTAB further correctly acknowledged that
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`“it is not at all logical to refer to a type of product or service as a ‘booking.com.’”
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`40.
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`Consistent with the TTAB’s findings that BOOKING.COM carmot be used in a
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`grammatically coherent way to refer generically to anything, there is no evidence in the entire
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`history of Booking.com’s use of its trademark that any other parties offering travel agency
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`services refer to themselves as “Booking.com’s.”
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`41.
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`Consistent with the TTAB’s findings that BOOKING.COM carmot be used in a
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`grammatically coherent way to refer generically to anything, there is no evidence in the entire
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`history of Booking.com’s use of its trademark that any consumers or users of travel agency
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`services refer to such sites as “Booking.com’s.”
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`42.
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`There is no actual evidence that Plaintiff’s actual claimed trademark
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`BOOKING.COM “is the common descriptive name of a class of goods or services.”
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`43.
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`Not only is it “impossible to use BOOKING.COM in a grammatically coherent
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`way to refer generically to anything,” but a recent consumer survey (conducted after the TTAB
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`decision) demonstrates that 75% of consumers recognize BOOKING.COM as a trademark, not a
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`common name.
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`44.
`
`The consumer survey commissioned by Booking.com confirms that the primary
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`significance of the term BOOKING.COM among the relevant class of consumers is as a
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`trademark, not as a common name.
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`45.
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`It is also impossible for consumers to have selected BOOKING.COM as the
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`travel service in which they have the highest customer satisfaction, as demonstrated by the J.D.
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`Power survey, if they did not recognize BOOKING.COM as the name of a particular travel
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`service.
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`46.
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`It is equally impossible for millions of Americans to have expressed their loyalty
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`to BOOKING.COM through consumer newsletter subscriptions and social media such as
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`Facebook and Twitter if they did not recognize BOOKING.COM as the name of a particular
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`travel service.
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`47.
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`The only purported “evidence” of genericness cited by the TTAB consisted of
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`lengthy character strings of third party domain names, such as “instantworldbooking.com,” in
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`which one must hunt to find the characters “b-o-o-k-i-n-g-.-c-o-m,” much like playing a
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`children’s game of word-finder.
`
`48.
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`There is no factual or logical basis on which to infer from a lengthy character
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`string such as “instantvvorldbooking.com,” that consumers ascribe to a small subset of the entire
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`character string a primary meaning independent of that entire character string.
`
`49.
`
`The only reason one would look for a specific term such as BOOKING.COM in a
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`longer string of characters such as “instantworldbooking.com” (as the TTAB did in rendering its
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`decision) is that term already has independent meaning to warrant looking for it. As a result, the
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`TTAB’s evidence is not relevant to establishing the meaning of the actual term in issue,
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`BOOKING.COM.
`
`50.
`
`There is no empirical evidence to explain or support the TTAB’s assumption that
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`such word-finder games offer any insights into what is the primary significance of the actual
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`mark in issue, BOOKING.COM, to consumers.
`
`51.
`
`In denying Booking.com’s appeal, the TTAB incorrectly declined to
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`acknowledge, much less apply (or even attempt to distinguish), the century-old bedrock legal
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`principle that a mark must be assessed in its entirety, not in pieces, as established by such cases
`
`as Estate ofP. D. Beckwith v. Comm ’r ofPatents, 252 U.S. 538 (1920); In re Dial-A-Mattress
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`Operating Corp., 240 F.3d 1341, 57 U.S.P.Q.2d. 1807 (Fed. Cir. 2001), and Princeton
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`Vanguard, LLC v. Frito-Lay N. Am., Inc., 786 F.3d 960 (Fed. Cir. 2015).
`
`52.
`
`Despite the fact that Booking.com made clear that its central legal arguments
`
`were premised on these three prior decisions, the TTAB never once acknowledged or cited the
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`controlling precedents, Estate ofP. D. Beckwith or Princeton Vanguard, LLC and only mentioned
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`In re Dial-A-Mattress Operating Corp. for other points.
`
`53.
`
`Despite the fact that Booking.com made clear that its central legal arguments
`
`were premised on these three prior decisions, the TTAB never attempted to reconcile its decision
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`with these prior controlling precedents.
`
`54.
`
`The failure of the TTAB to cite or even attempt to distinguish these three leading
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`precedents is an acknowledgement of the impossibility of reconciling its conclusion with settled
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`and controlling law.
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`55.
`
`Rather than assess the mark BOOKING.COM as a whole (under which a finding
`
`of genericness is impossible given the TTAB’s findings that “it is impossible to use
`
`BOOKING.COM in a grammatically coherent way to refer generically to anything”), the TTAB
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`instead broke the composite mark BOOKING.COM into component pieces, “BOOKING” and
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`“.COM” and speculated that it was possible for consmners to “understan ” a term they carmot
`
`use generically to be generic nonetheless because of the meanings of the component pieces,
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`“BOOKING” and “.COM.”
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`56.
`
`Under the TTAB’s unsupported method of analysis, the famous trademark
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`COCA-COLA, which consists of two generic terms, would also be generic.
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`57.
`
`The TTAB’s conjecture as to how constuners might possibly “understand” the
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`trademark BOOKING.COM simply by analyzing the elements “BOOKING” and “.COM”
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`separately is contrary to instruction in Princeton Vanguard, LLC that there can be “no short-cut”
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`to assessing the primary significance of a claimed mark, and that the test for genericness is the
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`same regardless of whether the mark is a compound term or a phrase.
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`58.
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`The TTAB’s conjecture as to how consumers might possibly “understand” the
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`trademark BOOKING.COM in a manner inconsistent with any grammatical or logically possible
`
`use of the name does not satisfy the TTAB’s burden to prove by clear evidence that
`
`BOOKING.COM is “the common descriptive name of a class of goods or services.”
`
`59.
`
`The TTAB’s assumption that there is some linguistically comprehensible way for
`
`the public to “understand [a] term to refer to a genus,” even if the term logically carmot be used
`
`as the actual name of the genus is supported by no empirical evidence, much less “clear
`
`evidence.”
`
`60.
`
`The TTAB articulated no basis in law, logic or linguistics for its theory that a term
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`can have as its primary meaning a meaning divorced from how the term can be used.
`
`61.
`
`There is no basis in law, logic or linguistics for the TTAB’s new theories of
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`human cognition and understanding.
`
`62.
`
`There is no basis in law, logic or linguistics for the TTAB’s speculation that it is
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`possible that the name BOOKING.COM can be “‘understood’ primarily to refer to an online
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`service for making bookings” even if logically it carmot be used that way and even where there is
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`no empirical evidence the name is used that way by the relevant purchasing public.
`
`63.
`
`The primary meaning of the word “booking” alone in the dictionaries cited by the
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`TTAB is “an arrangement for a person or group (such as a singer or band) to perfonn at a
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`particular place.”
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`64.
`
`A further meaning of the word “booking” alone in soccer is: “the act of officially
`
`recording the name of a player who has broken the rules in a game.”
`
`65.
`
`The word “booking” also has a slang meaning: “cool.”
`
`66.
`
`The word “booking” also has a slang meaning as a verb: “to leave quickly.”
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`67.
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`The word “booking” has a further colloquial meaning: “running really fast.”
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`68.
`
`Because of the many different meanings and inherent ambiguity of the word
`
`“booking,” it is unlikely consumers would adopt the term BOOKING.COM as “the common
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`descriptive name of a class of goods or services.”
`
`69.
`
`Because the trademark BOOKING.COM is also a URL, it carmot be used by any
`
`other third parties.
`
`70.
`
`Because the trademark BOOKING.COM is also a URL that carmot be used by
`
`any other third parties, it is all but impossible for it to achieve recognition as a generic term.
`
`71.
`
`The TTAB decision that the name BOOKING.COM is generic is in derogation of
`
`the PTO’s own published policy that “if a proposed mark is composed of merely descriptive
`
`tenn(s) combined with a TLD, the examining attorney must refiise registration on the Principal
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`Register under Trademark Act § 2(e)( 1), 15 U.S.C. § 1052(e)( 1), on the ground that the mark is
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`merely descriptive.” See TMEP § 1215.04.
`
`72.
`
`In denying Booking.com’s appeal, the TTAB also erred in holding that the mark
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`BOOKING.COM has not acquired distinctiveness in the marketplace.
`
`73.
`
`Plaintiff submitted ample evidence of its extensive advertising, commercial
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`impact, market share, and consumer-loyalty to establish the acquired distinctiveness of the mark
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`BOOKING.COM, all of which the TTAB incorrectly ignored.
`
`74.
`
`In denying Booking.com’s appeal, the TTAB did not dispute the evidence
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`presented (as of the conclusion of the examination process), that over 2 million Americans had
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`already affirmatively sought to join Plaintiffs BOOKING.COM mailing list, demonstrating
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`significant consumer loyalty.
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`75.
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`In denying Booking.com’s appeal, the TTAB did not dispute the evidence
`
`presented (as of the conclusion of the examination process), that over 2.7 million members of the
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`relevant public had already “liked” Plaintiffs brand and nearly 58,000 members of the relevant
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`public were already “talking about” Plaintiffs brand on Facebook.com, higher than other
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`accommodations and travel companies such as TRAVELOCITY, HOTELS.COM,
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`TRAVELZOO, and ORBITZ.
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`76.
`
`In denying Booking.com’s appeal, the TTAB did not dispute the evidence
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`presented (as of the conclusion of the examination process), that over 53,200 members of the
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`relevant public were already “following” Plaintiffs brand on the micro-blogging website
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`Twitter, more than other travel and accommodations sites like HOTELS.COM, TRIVAGO, and
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`HOTWIRE.
`
`77.
`
`In denying Booking.com’s appeal, the TTAB did not dispute the evidence
`
`presented (as of the conclusion of the examination process), that over 10 million unique U.S.
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`customers had (as of that date) sought out Plaintiffs BOOKING.COM branded website serv