news BOOKING.COM Trade Mark Could be Blocked!

[Picorio]

Booking.com a well known travel website and travel meta search engine for lodging owned and operated by Booking Holdings INC is in hot water lately with the US Supreme Court!

The US Supreme Court agreed on Friday to consider a bid by a federal agency to prevent Booking.com from trademarking the site name. According to the report, " It is too generic to deserve legal protection."
A quick research shows that Booking Holdings INC has filed several trademark applications since they began using it's name globally in 2006. However, in 2016 a tribunal of the Patent and Trademark Office rejected those applications.
Booking.com appealed the decision presenting a survey that showed that 74/% of customers identified Booking.com as a brand!
According to USPTO: "A trademark is generally a word, phrase, symbol, or design, or a combination thereof, that identifies and distinguishes the source of the goods of one party from those of others." https://www.uspto.gov/sites/default/files/documents/BasicFacts.pdf

Basically under U.S. law, only terms that distinguish a particular product or service from others on the market can be trademarked and in my personal opinion Booking.com doesn't meet this criteria. We have seen similar situations in which generic names such as Hotels.com, Lawyers.com, and Mattress.com were tried to be trademarked but the Federal Courts have rejected those trademark applications.
Apparently some companies have the wrong perception that by acquiring a .COM generic world would granted the right to trademark it. However, the Patent and Trademark Office said that the addition of ".com" to a generic word does not render it distinctive!

Complete report can be found here: https://www.reuters.com/article/us-usa-court-booking-hldg-idUSKBN1XI2B6

 

[Sutruk]

I think it's important to see the clear difference between registering a trademark for a generic word, like "Booking" AND registering it for "Booking.com".

For me, it's very clear that the trademark is limited to the domain "Booking.com" NOT to the generic word "Booking".

This is very important, because this means that if you register the domain Booking.Wathever extension, they will not claim your domain.

Now I don't know if they have already claimed some domain containing the word "Booking" but I would bet they haven't done that. (except if you try to be so clever to register bookingcom.xyz, in this case, yes they will claim and they will win the case, because their trademark is BOOKING.COM and not just BOOKING).

The most funny of all this, is that a chinese company registered a trademark at the United States Patent and Trademark Office for the word "Booking" and it was accepted in 2018... THIS is the problem.

 

[jberryhill]

This is very important, because this means that if you register the domain Booking.Wathever extension, they will not claim your domain.

No, they will argue that Booking.whatever is confusingly similar to Booking.com. A domain name need not be identical to the mark for a claim of confusing similarity.

The degree of distinctiveness will influence the range of things that might be found confusingly similar, but this notion that something needs to be solely identical with a mark is one that would best be discontinued to be passed around.

The most funny of all this, is that a chinese company registered a trademark at the United States Patent and Trademark Office for the word "Booking" and it was accepted in 2018... THIS is the problem

That's incorrect.

A Chinese company filed an application to register a logo that looks like this:

For a crazy list of goods and services:

Apparatus for electronic games other than those adapted for use with an external display screen or monitor; Body-building apparatus; Christmas tree stands; Controllers for game consoles; Controllers for toy cars, planes; Elbow guards for athletic use; Exercise equipment, namely, exercise bands, training bars, rowing machines; Fishing tackle; Game equipment set sold as a unit comprised primarily of a playing board and playing cards and also including rules of play, dry erase boards and erasers, markers, a timer and T-shirts; Gaming devices, namely, gaming machines, slot machines, bingo machines, with or without video output; Gaming machines, namely, slot machines and video lottery terminals; Joysticks for video games; Magic tricks; Portable games with liquid crystal displays; Rackets for tennis, racquetball, squash, badminton; Targets; Toy robots; Apparatus for electronic games adapted for use with an external display screen or monitor; Arcade video game machines; Computerized video game tables for gaming purposes, namely, a computerized video craps game table; Electronic game equipment with a watch function; Electronic educational game machines for children; Inflatable swimming pools; LCD game machines; Play swimming pools; Video game machines for use with external display screen or monitor; Video game machines for use with televisions

And, notably, not for booking services for anything.

What would be a great habit for domainers to get into, is to look at USPTO data like this:

Mark Drawing Code (3) DESIGN PLUS WORDS, LETTERS, AND/OR NUMBERS
Design Search Code 26.17.01 - Bands, straight ; Bars, straight ; Lines, straight ; Straight line(s), band(s) or bar(s)
26.17.06 - Bands, diagonal ; Bars, diagonal ; Diagonal line(s), band(s) or bar(s) ; Lines, diagonal
Serial Number 88152264
Filing Date October 11, 2018
Current Basis 1A
Original Filing Basis 1A
Owner (APPLICANT) SHENZHEN CHT TECHNOLOGY CO.,LTD limited company (ltd.) CHINA Building L, ShengGuang Industrial Area NO.152 DongHuan Rd.,XinQiao St. Bao'An Dist.,Shenzhen CHINA 518104
Description of Mark Color is not claimed as a feature of the mark. The mark consists of stylized wording BOOKING with letter B and K in upper case, also there're two short lines on each O forwarding left and right repectively.
Type of Mark TRADEMARK
Register PRINCIPAL
Live/Dead Indicator LIVE

...and then ask yourself, "What is the registration number?" You'll see a serial number for the application up there, but no registration number. The reason for that is because this application has not registered.

In fact, the application was refused for a laundry list of reasons, some of which are worth discussing, but here is the refusal letter:

http://tsdr.uspto.gov/documentviewer?caseId=sn88152264&docId=OOA20190826183939#docIndex=1&page=1

You'll notice a section about the "specimen of use" and a section about legal representative. The USPTO has undertaken some measures to cut down on bogus Chinese trademark registration applications like this one, where the "specimen of use" looks more like something cooked up for the purpose of the application itself:

The specimen refusal is continued and maintained because the specimen in International Class 28 appears to consist of a digitally altered image or a mock-up of the mark on the goods or their packaging and does not show the applied-for mark in actual use in commerce.

And that's because the specimen, for all of those goods and services, is this:

...and doesn't look very much like a commercially packaged product, particularly since the letter "g", for example, doesn't seem to follow the contour of the plastic fold there.

There have been thousands and thousands of these bogus applications filed by Chinese applicants. Why they do it is something of a mystery.

The other thing the USPTO has required, since the system has been so thoroughly abused, is for the applicant to be a US resident or to hire a US attorney to pursue applications. It became obvious with the Chinese applications that there was no downside to someone in Shenzhen submitting material under oath to the USPTO and lying their asses off. So, now, someone in the US is going to be, at least theoretically, accountable to US legal processes for that sort of thing. Hence the action states:

Applicant must be represented by a U.S.-licensed attorney. The application record indicates that applicant’s domicile is outside of the United States in China, but no attorney who is an active member in good standing of the bar of the highest court of a U.S. State or territory has been appointed to represent the applicant in this matter. All applicants whose permanent legal residence or principal place of business is not within the United States or its territories must be represented by a U.S.-licensed attorney at the USPTO.

This, by the way, is the second and final refusal of the application. It was refused once already and abandoned. The applicant petitioned to revive it, and it's been refused again. Barring some sort of miracle, this one is going to go abandoned again as of February 26, 2020 (the deadline to respond to the current refusal).

 

[Sutruk]

No, they will argue that Booking.whatever is confusingly similar to Booking.com. A domain name need not be identical to the mark for a claim of confusing similarity.

Hello John, thank you for the extensive response.
Although you clearly know more about this issue as you are a Lawyer in this matter, I still don't see the similarity. I mean, the registration word is very clear "Booking.com" and it should just be circumscribed to that. You can see similarities, but I don't see any similarity if you register "Booking.World" because their trademark is just circumscribed to "Booking.Com".
I didn't find any UDRP cause filled by Booking.com against a domain just for containing "Booking". But I found one against a domain containing "BookingCom.xyz"

...and then ask yourself, "What is the registration number?" You'll see a serial number for the application up there, but no registration number. The reason for that is because this application has not registered.

Thank you for the note. I didn't know about this fact.
In fact, when I see the Trademark registration page for this Trademark, it looks like is everything is correct, as it says at the bottom line, Live/Dead Indicator LIVE.
In my oppinion, it should state something like "in Progress" or "in Review" but not LIVE.
So, thank you to notice about the Serial Number fact for the application.

The other thing the USPTO has required, since the system has been so thoroughly abused, is for the applicant to be a US resident or to hire a US attorney to pursue applications. It became obvious with the Chinese applications that there was no downside to someone in Shenzhen submitting material under oath to the USPTO and lying their asses off. So, now, someone in the US is going to be, at least theoretically, accountable to US legal processes for that sort of thing. Hence the action states:

Applicant must be represented by a U.S.-licensed attorney. The application record indicates that applicant’s domicile is outside of the United States in China, but no attorney who is an active member in good standing of the bar of the highest court of a U.S. State or territory has been appointed to represent the applicant in this matter. All applicants whose permanent legal residence or principal place of business is not within the United States or its territories must be represented by a U.S.-licensed attorney at the USPTO

Thank you for this quote. I didn't know too about this fact.
This application looks to be failing by lot of parts. So I would not place the LIVE status into that page. But this is just my humble opinion

This, by the way, is the second and final refusal of the application. It was refused once already and abandoned. The applicant petitioned to revive it, and it's been refused again. Barring some sort of miracle, this one is going to go abandoned again as of February 26, 2020 (the deadline to respond to the current refusal).

So meanwhile it could just state the application status as "in Process" or "under revivew" but not "LIVE".

But again, thank you very much for your review of the case, it has been very instructive at least for me. I am not a Lawyer, so my words only constitute my humble opinion in this matter

 

[Picorio]

 

[jberryhill]

as it says at the bottom line, Live/Dead Indicator LIVE.

No worries. I'm thinking of keeping a running log...

https://www.namepros.com/threads/what-about-mens-jewerly-store-tm.1141717/#post-7282016

Just because something is "LIVE" and in the USPTO database doesn't means doodly-squat without other information from the record. Depending on the other data, it could mean all kinds of different things.

https://www.namepros.com/threads/trademark-check.1105767/#post-6943007

There are lots of things in these database other than "trademarks". Domainers typically cannot tell the difference between applications that are use-based or intent-to-use based, applications that are refused and abandoned, registrations which may have simply not been renewed as an oversight, or any of the various types of things that might turn up as a result of using these databases. All of the various data fields in a trademark database record may, or may not, mean something important. For example, a common question here at Namepros is the meaning of the "LIVE" or "DEAD" status indicator in a USPTO database record. The unfortunate answer, which is mostly ignored, is that the "LIVE" or "DEAD" status might mean any of several things, depending on other information in the record or accessible via the TSDR database linked to the TESS database record.

https://www.namepros.com/threads/domain-registered-before-trademark.542846/#post-3221160

No, that's not what "live" means.

I can file an intent-to-use application for "dog poop" today. Tomorrow it will appear in the database as a "live" application. Such an item in the database would be worth, approximately, dog poop.

The mis-reading and misunderstanding of records in the USPTO database is so endemic on these forums, that I knew my five dollars would be safe.

The hallmark of this species of question is emphasis on the word "live" without any other data such as whether it is registered, under refusal, ITU, or any of a number of other things.

https://www.namepros.com/threads/trademark.1012714/#post-6103778

 

[Sutruk]

There are lots of things in these database other than "trademarks". Domainers typically cannot tell the difference between applications that are use-based or intent-to-use based, applications that are refused and abandoned, registrations which may have simply not been renewed as an oversight, or any of the various types of things that might turn up as a result of using these databases. All of the various data fields in a trademark database record may, or may not, mean something important. For example, a common question here at Namepros is the meaning of the "LIVE" or "DEAD" status indicator in a USPTO database record. The unfortunate answer, which is mostly ignored, is that the "LIVE" or "DEAD" status might mean any of several things, depending on other information in the record or accessible via the TSDR database linked to the TESS database record.

Well, thanks again for clarifying the Live/Dead Indicator.

When there's no Registration Number, there's no Active Trademark, understood.

When I have had to look if there's a trademark in the US Trademark Office, I recognize that I was just looking at the LIVE/DEAD or ABANDONED indicator. And I thought every Trademark with the LIVE indicator was an active one.

I think it would be more clear, for the most users checking the database, that appears some kind of Status indicator, that clarifies the real Status of the Trademark, or the Application, or wathever.

When the Trademark is just Filed, Under Review, Rejected, Approved and Active, Abandoned or Expired. Or another Status I may have forgotten.

But this is just my feedbak.

Thanks again for clarifying this matter John, it's appreciated.

 

[Dave]

Just posting to give a shout out to @jberryhill, what a great guy and a true gem to this community. You sir are fantastic! Thank you.

 

[TheBuyerz]

"Booking.com" should be considered as trademark, but not the word "BOOKING".

They already made some ads for this domain name: Booking.Yeah on TV ! I don't know if it's related to this or not.

 

[Sutruk]

No worries. I'm thinking of keeping a running log...

https://www.namepros.com/threads/what-about-mens-jewerly-store-tm.1141717/#post-7282016

Just because something is "LIVE" and in the USPTO database doesn't means doodly-squat without other information from the record. Depending on the other data, it could mean all kinds of different things.

https://www.namepros.com/threads/trademark-check.1105767/#post-6943007

There are lots of things in these database other than "trademarks". Domainers typically cannot tell the difference between applications that are use-based or intent-to-use based, applications that are refused and abandoned, registrations which may have simply not been renewed as an oversight, or any of the various types of things that might turn up as a result of using these databases. All of the various data fields in a trademark database record may, or may not, mean something important. For example, a common question here at Namepros is the meaning of the "LIVE" or "DEAD" status indicator in a USPTO database record. The unfortunate answer, which is mostly ignored, is that the "LIVE" or "DEAD" status might mean any of several things, depending on other information in the record or accessible via the TSDR database linked to the TESS database record.

https://www.namepros.com/threads/domain-registered-before-trademark.542846/#post-3221160

No, that's not what "live" means.

I can file an intent-to-use application for "dog poop" today. Tomorrow it will appear in the database as a "live" application. Such an item in the database would be worth, approximately, dog poop.

The mis-reading and misunderstanding of records in the USPTO database is so endemic on these forums, that I knew my five dollars would be safe.

The hallmark of this species of question is emphasis on the word "live" without any other data such as whether it is registered, under refusal, ITU, or any of a number of other things.

https://www.namepros.com/threads/trademark.1012714/#post-6103778

John, after reading some of the links you provided... it's like we should learn a bit of Law for understanding those trademark records
At least, we should read carefully some of those links to undestand a bit about this matter...

So, just to clarify a bit about this... We have to look for the Registration Number, AND the Registration Date, that is supposed to be the Valid date from when the Trademark is Active, right?

For example... Could we safely register a domain for "whatever words" even if there is already a Filing Date for "whatever words", but there's still no Registration Number and Registration Date. Would that be correct?

Thanks