Foley’s Work in Booking.com Case Ranked as One of the Top Trademark Rulings of 2017

A case Foley handled on behalf of Booking.com was listed as one of the 10 most important trademark rulings of the year, according to Law360’s annual review of major rulings in trademark law.

In August, a federal court judge in Virginia reversed a decision by the Trademark Trial and Appeal Board holding that “Booking.com” could not be registered as a trademark, bucking precedent to rule that the addition of “.com” to a generic term makes it potentially protectable under the Lanham Act, according to the Law360 article, “The Top 10 Trademark Rulings of 2017.”

Previously, the Federal Circuit had rejected trademark registrations for URLS like Hotels.com and Mattress.com, holding that the mere addition of a so-called top-level domain (TLD) to a generic term does not magically transform it into a protectable term.

But U.S. District Judge Leonie M. Brinkema ruled that that addition of a TLD can create a protectable, descriptive term under the Lanham Act if consumers strongly associate it with a source. Brinkema said the issue was one of first impression in her district.

Partner Jonathan Moskin, senior counsels Brian Kapatkin and Katherine Califa and associate Eoin Connolly represented Booking.com.