Booking.com Heads to the Supreme Court – Top Level Domain Name Trademark Protection (Part I of II)
Introduction:
On November 8, 2019, the Supreme Court granted certiorari in United States Patent and Trademark Office v. Booking.com B.V. In this case, Booking.com B.V. (“Booking.com”) applied to register four trademark applications involving the mark “BOOKING.COM.” Notwithstanding the facts that:
- one application was for a wordmark; while
- the other three applications incorporated various stylized versions of the mark;
the Trademark Trial and Appeal Board (“TTAB”) of the U.S. Patent and Trademark Office (“U.S.PTO”) found that all four versions of the “BOOKING.COM” mark were ineligible for registration. The TTAB concluded that “BOOKING.COM” is generic as applied to the various travel agency / hotel reservation services recited in the applications.
As a threshold matter, the procedural history of this case offers valuable lessons for those considering whether to appeal a Trademark Examining Attorney’s refusal to issue a registration. Accordingly, this somewhat complicated history is the subject of Part I of this blog post series.
In Part II of this blog post series, we will review the substantive issues involved in this case, and share our opinion as to how the U.S. Supreme Court is likely to rule.
Lessons in Procedural Posture:
As noted above, the procedural history of this case is worth exploring. After some initial back-and-forth, the Trademark Examining Attorney assigned to Booking.com’s applications eventually issued a Final Office Action rejection in each of the four applications. Thereafter, Booking.com undertook the following three steps.
Step One – Request for Reconsideration & Filing a TTAB Appeal:
Booking.com simultaneously filed in each application: (i) a Request for Reconsideration after Final Action; and (ii) an appeal to the TTAB. This simultaneous filing is instructive.
Sometimes, depending on the content of the Final Office Action (and the “temperament” of the Trademark Examining Attorney), it may be advantageous for an applicant to file a Request for Reconsideration by itself, i.e., without filing an appeal to the TTAB. For example, if it appears that the Trademark Examining Attorney is “close” to approving an application, a Request for Reconsideration with additional evidence / arguments may be helpful. That being said, the Trademark Examining Attorney is under no obligation to consider a Request for Reconsideration – and an Applicant may be forced to eventually file an appeal in order to avoid abandoning an application.
Here, however, Booking.com simultaneously filed a Request for Reconsideration and an appeal. In general, by making such a simultaneous filing, the TTAB will institute – then immediately suspend – the appeal. The TTAB will then generally remand the application to the Trademark Examining Attorney to consider the request for reconsideration. This can be a particularly effective approach when it seems clear that a Trademark Examining Attorney will not approve an application voluntarily, but may do so under the “pressure” of an impending TTAB appeal.
Step Two – Litigating a TTAB Appeal:
After the Trademark Examining Attorney denied Booking.com’s Request for Reconsideration, Booking.com litigated the case before the TTAB. Of particular interest, Booking.com requested – and was granted – an oral hearing before the TTAB under TBMP § 1216.
Oral hearings are not mandatory in ex parte TTAB appeals, but are generally scheduled if timely requested by an applicant (a Trademark Examining Attorney cannot request an oral hearing). Oral hearings can be an effective way to help the TTAB understand a particularly complicated case. Additionally, as with any litigation – much of which settles “on the courthouse steps” – an oral hearing also gives an applicant a final opportunity to try and reach an agreement with the Trademark Examining Attorney.
Step Three – Seeking Further Review
Unfortunately for Booking.com, the TTAB affirmed the Trademark Examining Attorney’s decision to refuse registration. In doing so, the TTAB took particular note of the fact that a full genericness consumer survey (called a “Teflon” or “Thermos” survey) was not submitted as evidence to combat the Trademark Examining Attorney’s genericness finding.
Frankly, the likely reason for Booking.com’s failure to include such a survey is simple: surveys can be very expensive – with costs often starting at $50,000 and going up depending on the complexity of conducting the survey / analyzing the results thereof.
Faced with such an adverse TTAB decision, an applicant is generally faced with the following options:
- request that the TTAB rehear, reconsider or modify its final decision;
- file a civil action in a U.S. District Court; or
- file an appeal to the U.S. Court of Appeals for the Federal Circuit (“CAFC”).
Each of these three options are discussed below.
Option One:
With respect to option (i), whether this approach is cost effective often depends on the “tone” of the judges at oral argument (if any) and the content of the TTAB’s decision. Requesting that the TTAB rehear, reconsider or modify its final decision can also be helpful where an applicant believes it would be helpful to “tee up” a case for appeal by providing more concise or focused briefing.
That being said, such a request cannot be used to introduce new evidence. A request that the TTAB rehear, reconsider or modify its final decision must be filed within one month of the date of the TTAB’s decision (see: TBMP § 804). Where such a request is timely filed, the time to seek judicial review is also tolled until the TTAB takes action on the request (see: TBMP § 543).
Option Two:
With respect to option (ii), an applicant has the right under 15 U.S.C. §1071(b) to file a civil action in a U.S. District Court.
Generally, such civil actions may be brought in any Federal district court which has jurisdiction over a given party. Under 15 U.S.C. § 1071(b)(4), however: (a) if there are adverse parties residing in a plurality of districts not embraced within the same state; or (b) if there is an adverse party residing in a foreign country; the United States District Court for the Eastern District of Virginia has jurisdiction. Finally, in ex parte cases, the U.S. PTO (which is headquartered in Alexandria, Virginia) is considered to reside in the Eastern District of Virginia for purposes of venue (see: TBMP § 903.03).
The “benefit” of this approach is that the District Court examines the case de novo, i.e., the case is essentially a “redo” of the TTAB proceedings. Critically, this gives an applicant the opportunity to introduce new factual evidence into the record (or correct “errors” made before the TTAB). Another potential benefit is that issues of fact can be decided by a jury – something which may help certain parties.
The “downside” of this approach is that it can be very costly and time consuming. Specifically, because the District Court case becomes, in essence, a brand new proceeding – it can take many years and large sums to litigate.
Another “downside” is that – in ex parte proceedings – an applicant has to pay all the expenses of the proceeding, whether the final decision is in favor of the applicant or not (unless the Court finds that the expenses are unreasonable). Indeed, as discussed more fully below, Booking.com ultimately chose this option and, despite winning the case, was ordered by the District Court to pay over $75,000 in costs to the U.S. PTO (which costs included the salaries of the U.S. PTO’s attorneys and paralegals).
Option Three:
Finally, with respect to option (iii), an applicant has the right under 15 U.S.C. §1071(a) to file an appeal directly to the CAFC. The CAFC then reviews the record from the TTAB proceeding (which neither party can supplement), and reviews whether the TTAB properly applied the law.
The “benefit” of this approach is that the CAFC judges are amongst the most learned and experienced judges in the United States with respect to trademark matters. Moreover, if the case turns on a legal issue rather than a factual issue – or if the facts as presented in the U.S. PTO record are not in dispute – an appeal to the CAFC can be helpful. An additional benefit is that an applicant is not required to bear the cost of the U.S. PTO in appealing to the CAFC – unlike seeking de novo review in District Court.
The “downside” of this approach is that the CAFC upholds the U.S. PTO’s factual findings if they are supported by “substantial evidence” – making it very hard to overturn a mistaken factual conclusion by the TTAB. Another “downside” is the difficulty and expense in filing an appeal.
Booking.com Took Option Two – Filing a Civil Action in the U.S. District Court for the Eastern District of Virginia:
In the instant case, Booking.com chose to file a civil action in the U.S. District Court for the Eastern District of Virginia. We suspect Booking.com did this for two reasons, namely:
- to enjoy de novo review of this matter; and
- in order to introduce new evidence, namely, surveys and expert testimony in order to combat the U.S. PTO’s genericness arguments.
Ultimately, Booking.com was successful in this approach – winning on summary judgment in large part because the U.S. District Court for the Eastern District of Virginia found the survey evidence highly compelling and found that “BOOKING.COM” was not a generic trademark.
U.S. PTO Appeals to the Fourth Circuit Court of Appeals:
After its loss in the U.S. District Court for the Eastern District of Virginia, the U.S. PTO appealed to the Fourth Circuit Court of Appeals (which has jurisdiction over appeals from the U.S. District Court for the Eastern District of Virginia).
In its opinion, the Fourth Circuit Court of Appeals:
- affirmed the District Court’s finding that “BOOKING.COM” is descriptive, not generic; and
- affirmed the District Court’s finding that “BOOKING.COM” is protectable as a trademark inasmuch as the U.S. PTO did not challenge the District Court’s finding that “BOOKING.COM” had acquired secondary meaning insofar as “BOOKING.COM” was held to be descriptive.
Here too, the Fourth Circuit placed special emphasis on Booking.com’s use of a “Teflon” survey – further vindicating Booking.com’s decision to appeal de novo to the U.S. District Court for the Eastern District of Virginia rather than appealing directly to the CAFC (where Booking.com would not have had the benefit of being able to introduce such survey evidence).
Conclusion:
As the procedural history of this case demonstrates, an adverse final decision by a Trademark Examining Attorney need not be the “end of the road” for a trademark application. Rather, a determined applicant can take various steps to defend its rights. Moreover, such steps can be staged appropriately – to allow a gradual increase in cost and fees (such as conducting a survey or hiring experts) as a case escalates in complexity. Ultimately, the U.S. PTO appealed the Fourth Circuit’s opinion to the U.S. Supreme Court. As noted above, an analysis of the case as it currently stands – including a substantive discussion of the legal issues involved – will be explored
