Booking.com 상표의 등록여부

• 영문명: Registrability of Booking.com
• 발행기관: 세창출판사
• 저자명: 최덕규(Dukkyu Choi)
• 간행물 정보: 『창작과 권리』2019년 가을호 (제96호), 24~29쪽, 전체 6쪽
• 주제분류: 법학 > 법학
• 파일형태: PDF
• 발행일자: 2019.09.01

영문 초록

On February 4 , 2019, the U.S. Court of Appeals for the Fourth Circuit(“Fourth Circuit”) affirmed the U.S. district court s determination that mark BOOKING.COM was subject to federal mark registration. Booking.com maintains an online travel reservation service since 2006, under the domain name BOOKING.COM. In 2011 and 2012, the Booking.com filed four U.S. service mark applications to register BOOKING.COM. The U.S. Patent and Trademark Office (“USPTO”) rejected the mark applications, finding the mark generic for online hotel reservation services. Alternatively, the USPTO concluded the marks were merely descriptive and Booking. com had failed to prove the marks had acquired secondary meaning . Booking.com appealed to the USPTO’s Trademark Trial and Appeal Board (“TT AB”), which affirmed the examiner’s decision to deny mark registrations from the four applications. Next, Booking. com appealed to the U.S. District Court for the Eastern District of Virginia (“district court”). In the district court, Booking.com submitted new evidence that BOOKING.COM was recognized by consumers as a brand rather than a generic service. In light of the new evidence, the district court concluded that the company met its burden of demonstrating that the BOOKING.COM mark had acquired secondary meaning and was subject to registration. Subsequently, the USPTO appealed to the Fourth Circuit. On appeal, the USPTO argued that the BOOKING.COM mark was generic; however, the USPTO stated it would concede that Booking.com had successfully demonstrated the mark had acquired secondary meaning if the Fourth Circuit determined the mark to be descriptive. First, the Fourth Circuit explained that the USPTO had the burden of establishing that the mark was generic by: (1) providing the identification of the class of service to which use of the mark is relevant; (2) providing the identification of the relevant consuming public; and (3) determining whether the primary significance of the mark to the relevant public was an indication of the nature of the class of the services, rather than the brand, to which the mark related, which suggests that the mark is generic. Next, the Fomth Circuit stated that the mark needed to be considered as a whole (BOOKING.COM), instead of its component, BOOKING. While adding the term “.com” to a generic word is evidence that the entire domain name is generic, the Fourth Circuit emphasized that evidence of the public’s understanding of the mark is controlling. The Fourth Circuit further noted that consumer surveys are the preferred method of proving whether a term is generic. Accordingly, the Fourth Circuit analyzed Booking.com’s survey of the public s understanding of the mark, BOOKING.COM. Ultimately, the Fourth Circuit found the survey’s findings that 74.8 percent of respondents identified BOOKING.COM as a brand name highly persuasive that the mark was descriptive, not generic. After concluding the district court did not err in its finding that BOOKING.COM was not generic and was subject to federal registration, the Fourth Circuit affirmed the district court.

목차

Ⅰ. 사건의 개요

Ⅱ. 사건의 주요 논점

Ⅲ. 결어

Abstract

키워드

일반명칭표장 기술표장(성질표시표장) 1차적 의미 2차적 의미(사용에 의한 식별력) generic mark descriptive mark primary significance secondary meaning(distinctiveness by use)