The district court did not err in concluding that BOOKING.COM is a protectable mark. The U.S. Patent & Trade Office failed to satisfy its burden of proving that the relevant public understood BOOKING.COM, taken as a whole, to refer to general online hotel reservation services rather than Booking.com the company.
If the mark is descriptive, it is protectable. Adding the top-level domain “.com” to a generic second-level domain like “booking” can yield a non-generic mark, consistent with the district court’s finding this case.
However, the court will not disturb the district court’s grant of the USPTO’s attorneys fees under 15 U.S.C. § 1071(b)(3), in the amount of $76,874.
The American Rule’s requirement that Congress “clearly and directly” express an intent to deviate from that rule may apply to § 1071(b)(3) – a statute that, if read to include attorneys fees, anomalously requires an appealing party to pay the prorated salaries of government attorneys. Nonetheless, Shammas v. Focarino – which interpreted the statute to be independent of the American Rule – remains the law in this circuit, so Booking.com must pay for all the expenses of the proceeding below.
Affirmed. Judge Wynn concurred in part and dissented in part.