Booking.com BV v. U.S. PTO (P)

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.

Booking.com BV v. U.S. PTO (P), No. 17-2458, Feb. 4, 2019. 4th Cir. (Duncan) from EDVA at Alexandria (Brinkema).



Categories: 4th U.S. Circuit Court of Appeals, Opinions, Published

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