## Facts

- Booking.com B.V. operated an online hotel and travel reservation service using the name and domain “Booking.com.”
- Booking.com sought federal registration of marks containing BOOKING.COM for online reservation-related services.
- The USPTO refused registration, and the Trademark Trial and Appeal Board (TTAB) affirmed, concluding BOOKING.COM was generic or merely descriptive without protectable distinctiveness.
- Booking.com filed a civil action under 15 U.S.C. § 1071(b) in the Eastern District of Virginia, introducing new evidence, including consumer survey evidence on public perception of BOOKING.COM.
- The dispute centered on whether consumers understand BOOKING.COM as the name of a class of services (generic) or as a source-identifying brand (protectable).

## Issues

1. In a 15 U.S.C. § 1071(b) civil action, what level of deference is owed to TTAB factual findings when the challenger introduces new evidence?
2. Whether BOOKING.COM is generic for online hotel and travel reservation services and therefore barred from registration.
3. If not generic, whether BOOKING.COM is merely descriptive and, if so, whether it has acquired distinctiveness (secondary meaning) for the relevant services.
4. If registrable, what service scope and limitations should apply to the resulting registration.

## Decision

- The court treated the § 1071(b) action as permitting an expanded record and made its own findings where new evidence materially bore on issues addressed by the TTAB.
- The court held BOOKING.COM was not generic for the relevant online reservation services, emphasizing consumer perception of the term as a whole.
- The court held BOOKING.COM was descriptive but had acquired secondary meaning for core hotel-reservation services based on the expanded evidentiary record.
- The court reversed the TTAB’s refusal in part and directed registration consistent with limits tied to the specific services and the mark’s descriptive character.

## Legal Principles

- Genericness turns on the “primary significance” of the term to the relevant public: whether consumers primarily understand the term to name a class of services rather than a particular source.
- Composite terms must be evaluated as a whole; a generic term combined with “.com” is not automatically generic without evidence of how consumers perceive the composite.
- In a § 1071(b) action, a party may introduce evidence beyond the administrative record; when new evidence is presented, the court makes factual findings in light of the expanded record rather than mechanically deferring to the TTAB.
- Descriptive marks are registrable on the Principal Register only upon proof of acquired distinctiveness (secondary meaning), commonly shown through factors such as duration and exclusivity of use, advertising, commercial success, consumer survey evidence, and marketplace recognition.
- Registration of a descriptive composite mark does not confer exclusive rights to the descriptive component (here, “booking”) apart from the mark as registered and the likelihood-of-confusion framework.

## Conclusion

The court concluded that consumers did not primarily perceive BOOKING.COM as a generic name for online reservation services; instead, the evidence supported that it functioned as a source identifier for hotel-reservation services. Although descriptive, the mark was registrable due to acquired distinctiveness, with protection limited to the specified services and without granting a monopoly over the word “booking.”


Booking.com B.V. v. Matal, 278 F. Supp. 3d 891 (E.D. Va. 2017)