Author: Erin Gormley

By: CAITLIN CANAHAI

Booking.com’s new self-deprecating ad could mean trouble for their trademark rights.  In the travel site’s Super Bowl spot, Idris Elba pokes fun at the company’s name, saying, “We named ourselves Booking.com, which is kind of lit, if we’re talking…literal.”  The statement comes on the heels of the brand’s nearly 9-year long legal battle to obtain trademark protection for its name. 

Trademarks are words and symbols that consumers use to distinguish the goods or services of one business from another.  For instance, “Apple” is a strong trademark for computers.  Importantly, trademark protection is denied to generic terms for goods and services.  “Apple” could never be protected as a trademark for apples because it communicates the type of product, rather than the source.  This principle protects competition in the marketplace, so that companies can accurately describe their goods and services. 

As Idris said, “BOOKING.COM” seems like a pretty literal name for a website that allows you to book travel accommodations.  In trademark terms, you might say “Booking.com” is generic. This was exactly what the U.S. Patent and Trademark Office (USPTO) decided when Booking.com applied to register its name as a trademark for making hotel reservations in 2012.  The USPTO denied the registration on the grounds that “booking” was generic for Booking.com’s services. Adding “.com” to a generic term could create a protectible trademark, because “.com” merely indicates web address and adds no source identifying significance.

Booking.com appealed the USPTO’s decision all the way to the Supreme Court. In 2020, the Court ruled in their favor in United States Patent and Trademark Office v. Booking.com B.V.  The Court rejected the USPTO’s rule that the addition of a top-level domain (.com, .org, .net, etc.) to an otherwise unregistrable term could not create a protectible trademark.  Instead, the Court ruled, the mark must be considered in its entirety to determine whether consumers perceive it as a trademark.  The decision allowed Booking.com to introduce evidence demonstrating that it had taught consumers to perceive “BOOKING.COM” as a trademark through many years of use and advertising. 

Following the decision, Booking.com obtained three trademark registrations for its “BOOKING.COM” mark.  The registrations issued in January of 2021, over 8 years from the date of the initial applications.  Given how much time and money Booking.com invested in proving its mark is not generic, its decision to mock its own name on the biggest advertising day of the year is surprising, to say the least.  Trademarks lawyers will tell you that it’s never a good idea to point out how weak your mark is in advertising. 

Realistically, Booking.com’s probably doesn’t have anything to worry about.  To obtain its registrations, Booking.com already had to prove that consumers primarily understood “BOOKING.COM” to be a brand name.   The company introduced survey evidence suggesting that about 74% of participating consumers recognized “BOOKING.COM” as a brand name.  So, a tongue-in-cheek joke in a commercial is unlikely to do serious damage to their name recognition. 

Still, Booking.com’s new ad campaign highlights the importance of having an experienced trademark attorney advise you on how you use your mark in advertising.  Using a trademark in certain ways in advertising can weaken or even eliminate your trademark rights, even after you obtain a trademark registration. 

Kloss Stenger & Gormley LLP is a firm with experienced attorneys ready and able to help you with any trademark questions or concerns. Contact us today to get started.

Each case brought before the Trademark Trial and Appeal Board (“TTAB”) raises a unique issue of trademark law, and provides new insight into how trademark questions are decided.  Recently, the refusal to register the mark MAMA BEAR, applied for in connection with various clothing products, was appealed to the TTAB. The resulting analysis focused on whether or not the phrase MAMA BEAR functions as a trademark. In short, is it eligible for the protection of registration? Or is it a message which “merely conveys ordinary, familiar concepts or sentiments that are used by a variety of sources in the marketplace?”

The Trademark Examining Attorney had denied the original application for registration on the grounds that the mark was not a trademark, as it failed to, “…indicate the source of Applicant’s goods and to identify and distinguish them from the goods of others.”

In order to be entitled to the protection of registration, a trademark must identify the applicant as the source of particular goods or services. Here, the TTAB had to conduct a failure-to-function analysis. This analysis looked at whether or not the mark did identify the applicant as the source of the goods in the mind of the consumers, or if the mark was simply a common, widely-used phrase that didn’t identify any particular source. A failure-to-function analysis examines all of the evidence on the record. Often times, this will include the Applicant’s use, dictionary definitions, and third-party uses of the term, to determine how potential consumers are likely to view the product.

The TTAB found, once all evidence had been reviewed and an analysis conducted, that MAMA BEAR was a “…common, widely used and generally understood term to convey a message of an ordinary or familiar concept or sentiment – aggressive protective parenting.” The phrase is one that consumers would expect to see on clothing items, but not necessarily to identify any particular brand. Thus, the TTAB determined that the mark did not serve as a designation of applicant as the source of the clothing. Therefore, the mark was not entitled to registration.

Ultimately, in this case, the TTAB denied the applicant’s appeal to register the mark MAMA BEAR.

So does this mean that the phrase MAMA BEAR can never serve as a trademark or be entitled to the protection of a USPTO registration? Not necessarily. Throughout these proceedings, the applicant brought up several examples where the phrase MAMA BEAR is present within registered marks. However, each of those marks either contains additional words, phrases, or images making it distinctive, or is arbitrary when applied to the respective goods and services set forth in those registrations. These may seem like small or unimportant distinctions, but they can be crucial when determining issues of trademark law.

Kloss Stenger & Gormley LLP is a firm with experienced attorneys ready and able to help you with any trademark questions or concerns. Contact us today to get started.