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A generic second-level domain (SLD) combined with a top-level domain (TLD) creates a descriptive mark that is eligible for protection only upon a showing of acquired distinctiveness. Importantly, acquired distinctiveness is a much higher bar than uniqueness and requires an evidentiary showing that in the minds of the public, the primary significance of a term is to identify the source of the product rather than the product itself. In the trademark context, source does not refer to the location where a good or service may be found, e.g., at the website associated with a domain name, but to the producer. Therefore, domain name marks composed of a generic SLD and TLD, will be eligible for protection only when the applicant can show that the primary significance of the mark in the minds of the relevant consumers is the producer. Such a showing is only possible where the owner of the mark has developed strong brand recognition.
Plaintiff Booking.com B.V. filed the present civil action challenging the denial by the Trademark Trial and Appeal Board ("TTAB") of the United States Patent and Trademark Office ("USPTO") of four trademark applications involving the mark "BOOKING.COM " for services in Classes 39 and 43. One of the applications was for the word mark and three were for stylized versions of the mark. For each of the applications, the TTAB found plaintiff's marks ineligible for registration as trademarks because it concluded that BOOKING.COM was generic for the services identified in the applications or, alternatively, that it was merely descriptive and lacked acquired distinctiveness. Plaintiff asked the court to reverse the decisions of the TTAB and order the USPTO Director to publish each application in the Principal Register.
Was “BOOKING.COM” a generic mark not entitled to protection?
The court held that “.com” should be read as a top-level domain (“TLD”), and that in the mark “booking.com,” “booking” was the second-level domain (“SLD”) and “.com” was the TLD. After carefully reviewing the Federal Circuit's precedent on this issue, the purposes of the Lanham Act, and the competition-protecting features built into the structure of trademark law, the Court has concluded both that a TLD generally has source identifying significance and that a mark composed of a generic SLD and a TLD was usually a descriptive mark eligible for protection upon a showing of secondary meaning. Applying these holdings to the facts of the case, the Court held that “BOOKING.COM” was a descriptive mark and that plaintiff has carried its burden of demonstrating the mark's secondary meaning as to the hotel reservation services described in Class 43 but not as to the travel agency services recited in Class 39. Accordingly, the court concluded that plaintiff’s mark was entitled to protection for the services identified in the hotel reservation services class as a descriptive mark. The motion was granted in part and denied in part.