Argued: October 31, 2018
Appeals from the United States District Court for the Eastern
District of Virginia, at Alexandria. Leonie M. Brinkema,
District Judge. (1:16-cv-425-LMB-IDD)
R. Walters, UNITED STATES DEPARTMENT OF JUSTICE, Washington,
D.C., for Appellants/Cross-Appellees.
Jonathan Ellis Moskin, FOLEY & LARDNER LLP, New York, New
York, for Appellee/Cross-Appellant.
A. Readler, Acting Assistant Attorney General, Nathan K.
Kelley, Solicitor, Thomas W. Krause, Deputy Solicitor,
Christina J. Hieber, Senior Counsel for Trademark Litigation,
Mark R. Freeman, Civil Division, UNITED STATES DEPARTMENT OF
JUSTICE, Washington, D.C.; Tracy Doherty-McCormick, Acting
United States Attorney, OFFICE OF THE UNITED STATES ATTORNEY,
Alexandria, Virginia; Mary Beth Walker, Associate Solicitor,
Molly R. Silfen, Associate Solicitor, Office of the
Solicitor, UNITED STATES PATENT & TRADEMARK OFFICE,
Alexandria, Virginia; for Appellants/Cross-Appellees.
Kapatkin, Eoin Connolly, FOLEY & LARDNER LLP, Washington,
D.C., for Appellee/Cross-Appellant.
H. McCormack, President, AMERICAN INTELLECTUAL PROPERTY LAW
ASSOCIATION, Arlington, Virginia; Theodore H. Davis, Jr.,
Jennifer R. Findley, Alexandra N. Martinez, KILPATRICK
TOWNSEND & STOCKTON LLP, Atlanta, Georgia, for Amicus
KING, DUNCAN, and WYNN, Circuit Judges.
DUNCAN, CIRCUIT JUDGE:
United States Patent and Trademark Office (the
"USPTO") and Booking.com ("Booking.com")
both appeal the district court's summary judgment ruling
regarding the protectability of the proposed trademark
BOOKING.COM. The USPTO appeals on the ground that the
district court erred in concluding that BOOKING.COM is a
protectable mark. Booking.com cross appeals, arguing that it
should not be required to pay the USPTO's attorneys fees
under 15 U.S.C. § 1071(b)(3). For the reasons that
follow we affirm as to both the appeal and the cross-appeal.
we recount the facts of this case, we briefly discuss the
legal trademark context in which it arises. Trademark law
protects the goodwill represented by particular marks and
serves the twin objectives of preventing consumer confusion
between products and the sources of those products, on the
one hand, and protecting the linguistic commons by preventing
exclusive use of terms that represent their common meaning,
on the other. OBX-Stock, Inc. v. Bicast, Inc., 558
F.3d 334, 339-40 (4th Cir. 2009).
order to be protectable, marks must be
"distinctive." To determine whether a proposed mark
is protectable, courts ascertain the strength of the mark by
placing it into one of four categories of distinctiveness, in
ascending order: (1) generic, (2) descriptive, (3)
suggestive, or (4) arbitrary or fanciful. George &
Co. v. Imagination Entm't Ltd., 575 F.3d 383, 393-94
(4th Cir. 2009). Marks falling into the latter two categories
are deemed inherently distinctive and are entitled to
protection because their intrinsic nature serves to identify
the particular source of a product. In contrast, descriptive
terms may be distinctive only upon certain showings, and
generic terms are never distinctive. This dispute concerns
only the first two of these four categories, with Booking.com
arguing the mark is descriptive and the USPTO arguing it is
is generic if it is the "common name of a product"
or "the genus of which the particular product is a
species," such as LITE BEER for light beer, or
CONVENIENT STORE for convenience stores. OBX-Stock,
Inc., 558 F.3d at 340. Generic terms do not contain
source-identifying significance--they do not distinguish the
particular product or service from other products or services
on the market. George & Co., 575 F.3d at 394.
Accordingly, generic terms can never obtain trademark
protection, as trademarking a generic term effectively grants
the owner a monopoly over a term in common coinage. If
protection were allowed, a competitor could not describe his
goods or services as what they are. CES Publ'g Corp.
v. St. Regis Publ'ns, Inc., 531 F.2d 11, 13 (2d Cir.
contrast, descriptive terms, which may be protectable,
describe a "function, use, characteristic, size, or
intended purpose of the product," such as 5 MINUTE GLUE
or KING SIZE MEN'S CLOTHING. Sara Lee Corp. v.
Kayser-Roth Corp., 81 F.3d 455, 464 (4th Cir. 1996). In
order to be protected, a descriptive term must have acquired
secondary meaning. Hunt Masters, Inc. v. Landry's
Seafood Rest., Inc., 240 F.3d 251, 254 (4th Cir. 2001).
Secondary meaning indicates that a term has become
sufficiently distinctive to establish a mental association in
the relevant public's minds between the proposed mark and
the source of the product or service. George &
Co., 575 F.3d at 394.
this background, we consider the facts before us.
operates a website on which customers can book travel and
hotel accommodations. It has used the name BOOKING.COM since
at least 2006. In 2011 and 2012, Booking.com filed four
trademark applications for the use of BOOKING.COM as a word
mark and for stylized versions of the mark with the USPTO.
Booking.com sought registration for, inter alia, Class 43
services, which include online hotel reservation
USPTO examiner rejected Booking.com's applications,
finding that the marks were not protectable because
BOOKING.COM was generic as applied to the relevant services.
In the alternative, the USPTO concluded that the marks were
merely descriptive and that Booking.com had failed to
establish that they had acquired secondary meaning as
required for trademark protection. After the examiner denied
Booking.com's motion for reconsideration, Booking.com
appealed to the Trademark Trial and Appeal Board (the
TTAB affirmed the USPTO's four refusals of registration
in three separate opinions. These opinions all concluded that
BOOKING.COM was a generic term for the services offered, and
therefore ineligible for trademark protection, because
"booking" generically refers to "a reservation
or arrangement to buy a travel ticket or stay in a hotel
room" or "the act of reserving such travel or
accommodation"; ".com" indicates a commercial
website; and consumers would understand the resulting
composite BOOKING.COM to primarily refer to an online
reservation service for travel, tours, and lodging, which are
the services proposed in Booking.com's applications.
Booking.com B.V. v. Matal, 278 F.Supp.3d 891, 896
(E.D. Va. 2017) (summarizing the TTAB's findings). In the
alternative, the TTAB concluded that BOOKING.COM is merely
descriptive of Booking.com's services and that
Booking.com had failed to demonstrate that the mark had
acquired secondary meaning, as required for trademark
appealed the TTAB's decisions by filing this civil action
under 15 U.S.C. § 1071(b) against the USPTO and the
USPTO's director in the Eastern District of Virginia in
April 2016. It argued that BOOKING.COM was a
descriptive or suggestive mark eligible for protection. In
support of its argument, Booking.com submitted new evidence
to the district court. This evidence included a "Teflon
survey, " indicating that 74.8% of consumers
recognized BOOKING.COM as a brand rather than a generic
district court held that although "booking" was a
generic term for the services identified, BOOKING.COM as
a whole was nevertheless a descriptive mark. The
district court further determined that Booking.com had met
its burden of demonstrating that the proposed mark had
acquired secondary meaning, and therefore was protectable, as
to the hotel reservation services described in Class 43. The
court therefore partially granted Booking.com's motion
for summary judgment, ordering the USPTO to register two of
the marks and remanded for further administrative proceedings
as to the other two.
USPTO subsequently filed two motions. Pursuant to Federal
Rule of Civil Procedure 59(e), the USPTO sought to amend the
court's order requiring the USPTO to register the two
trademarks, requesting instead that the court remand for
further administrative proceedings. It also filed a motion
for expenses pursuant to 15 U.S.C. § 1071(b)(3), which
would require Booking.com to pay $76, 873.61 of the
USPTO's expenses under 15 U.S.C. § 1071(b)(3). These
expenses included the salaries of the PTO's attorneys and
paralegals that worked on the defense action. The district
court denied the USPTO's motion to amend as to the two
marks, reasoning that they were registerable as trademarks
and that no further administrative proceedings were
necessary. However, the district court granted the
USPTO's motion for expenses. Both the USPTO and
Booking.com appealed. The USPTO and Booking.com challenge,
respectively, whether BOOKING.COM is protectable, and whether
Booking.com must pay the USPTO's attorneys fees.
first to the USPTO's contention that the district court
erred in concluding that BOOKING.COM is a protectable
trademark. According to the USPTO, BOOKING.COM is a generic,
not a descriptive, term that can never be protected.
review a district court's grant of summary judgment based
on the conclusion that a mark is sufficiently distinctive to
warrant trademark protection de novo. Retail Servs. Inc.
v. Freebies Publ'g, 364 F.3d 535, 541-42 (4th Cir.
2004). The question of whether a proposed mark is generic is
a question of fact that is subject to deferential review.
See Swatch AG v. Beehive Wholesale, LLC, 739 F.3d
150, 155 (4th Cir. 2014) (citing Pizzeria Uno Corp. v.
Temple, 747 F.2d 1522, 1533 (4th Cir. 1984)).
to our analysis, the USPTO concedes that if BOOKING.COM may
properly be deemed descriptive, the district court's
finding that it has acquired secondary meaning was warranted.
Rather, the USPTO only challenges the district court's
determination that BOOKING.COM is not generic. Therefore, the
limited question on appeal is whether the district court
erred in finding that BOOKING.COM is not generic. For the
reasons that follow, we conclude that the district court did
not err in finding that there was no genuine issue of
material fact on the issue of genericness and that, on these
facts, BOOKING.COM is a protectable trademark.
undertaking our analysis, two issues pertinent to the
genericness inquiry bear further elaboration: first, who
bears the burden of proving genericness, and second, the
framework for determining whether a proposed mark is generic.
never directly addressed the issue of which party bears the
burden of proving genericness on appeal when registration of
a mark is denied. However, the Federal Circuit has long
held, and we agree, that in registration proceedings, the
USPTO "always bears the burden" of establishing
that a proposed mark is generic. In re Cordua Rests.,
Inc., 823 F.3d 594, 600 (Fed. Cir. 2016); see In re
Merrill Lynch, Pierce, Fenner, and Smith, Inc., 828 F.2d
1567, 1571 (Fed. Cir. 1987) (explaining that the burden of
proving genericness "remains with" the
PTO) (emphasis added). This is so because finding a mark to
be generic carries significant consequence, as it forecloses
an applicant from any rights over the mark--once a mark is
determined to be generic, it can never receive trademark
protection. See 2 J. Thomas McCarthy, McCarthy
on Trademarks and Unfair Competition, § 12:12 (5th
ed. 2018) (explaining that finding a mark to be generic is a
"fateful step" as it may result in the "loss
of rights which could be valuable intellectual
therefore hold here that the USPTO bears the burden of
proving that BOOKING.COM is generic in the instant case.
discuss the framework for determining whether a mark is
generic. As we have discussed, generic terms are the
"common name of a product or service itself."
Sara Lee, 81 F.3d at 464. To determine whether a
term is generic, we follow a three-step test: (1) identify
the class of product or service to which use of the mark is
relevant; (2) identify the relevant consuming public; and (3)
determine whether the primary significance of the mark to the
relevant public is as an indication of the nature of the
class of the product or services to which the mark relates,
which suggests that it is generic, or an indication of the
source or brand, which suggests that it is not
generic. Glover v. Ampak, Inc., 74 F.3d
57, 59 (4th Cir. 1996).
term is deemed generic, it cannot subsequently become
non-generic. A term may be generic if, for example, it was
previously determined to be generic by a court. Kellogg
Co. v. Nat'l Biscuit Co., 305 U.S. 111, 117 (1938)
(finding that "shredded wheat" was generic because
a court had already deemed it to be so). A term may also be
deemed generic where evidence suggests that a term was
"commonly used prior to its association with the
products [or services] at issue." Hunt Masters,
240 F.3d at 254-55. In such cases of common usage, a court
may find that a term is generic even without looking to
evidence of consumer recognition. Id. For example,
in Hunt Masters, we found that the term "crab
house" was commonly used, as there were many restaurants
called "crab houses" across the country,
id. at 254 n.1, and concluded, therefore, that the
district court did not err in declining to consider consumer
term is deemed generic, subsequent consumer recognition of
the term as brand-specific cannot change that determination.
See Retail Servs., Inc., 364 F.3d at 547. Indeed,
courts have explained that "no matter how much money and
effort the user of a generic term has poured into promoting
the sale of its merchandise and what success it has achieved
in securing public identification," that user cannot
claim the exclusive right through trademark protection to
call the product or service by its common name.
Abercrombie & Fitch Co. v. Hunting World, Inc.,
537 F.2d 4, 9 (2d Cir. 1976).
case, neither party disputes the district court's finding
at the first step: that the mark is used to identify the
class or product to which it belongs--here, making hotel
reservations for others. Nor do they disagree as to step two:
that the relevant purchasing public consists of consumers who
use hotel reservation services offered via the internet or in
person. Instead, the ...