August 2017. After a five-year legal battle, Booking.com has finally won the right to register its name as a word mark in the United States. On 9 August, the District Court in Virginia ruled that the word Booking.com had sufficient acquired distinctiveness to qualify for trademark protection.
When in 2012 Booking.com applied for a US trademark registration for the word and device marks Booking.com, it was initially turned down by the US Patent and Trademark Office. The USPTO took the view that Booking.com was a generic designation or at any rate purely descriptive of an online service for booking accommodation, so couldn’t be registered.
After five years, victory at last
Booking.com lodged an appeal against the decision, which was overturned. Ultimately it took its case to the court in Virginia, where after five years it finally secured victory.
The court was swayed largely by a ‘Teflon survey’, a market survey submitted by Booking.com which showed that 74.8% of respondents regarded Booking.com as a trademark rather than a generic designation.
Teflon surveys are named after a 1975 market survey in which chemicals company DuPont de Nemours demonstrated in a legal dispute that the name Teflon was a brand, not a generic word. Booking.com used the same approach in its survey.
The company also submitted an impressive volume of evidence reflecting its huge marketing investments, high turnover and widespread use and universal familiarity of the name Booking.com. Based on this evidence, the court concluded that Booking.com had achieved acquired distinctiveness as a trademark for online accommodation bookings. The court has now ordered the USPTO to register the word and device marks Booking.com for these services, and has given it until 9 September to appeal.