There are very few ways for a company to obtain exclusive rights over a mark and it is essentially impossible for this to happen to a common word. For the other company to claim damages from your use of the generic word you would have to be using it in a non-generic fashion that is the same or similar as that of the Plaintiff and you would have had to done it in a way where you were pretty clearly trying to use their secondary meaning to your own advantage. This would be passing off your site as theirs.
In order to obtain some form of relief on a "passing off" claim, the user of a generic term must prove some false or confusing usage by the newcomer
above and beyond mere use of the generic name. This might include, for example, packaging or advertising words or graphics which, in combination with the generic term, cause mistake or confusion as to source.
McCarthy on Trademarks, § 12:48 (4th ed. 2010)
McCarthy on Trademarks
Accordingly, make sure your new website looks very different from the other companies. Create all your own text. In short avoid any possibility of confusion.
A quick look at all of the BOOKING.COM marks show that they all include a design and they have all been filed under 2f in part. The .com that has been added on to the word BOOKING is not relevant as tld's are inherently generic. Further, you will notice that there is a distinctiveness limitation statement as to "BOOKING.COM" ON SERIAL NO. 85485097. I believe there should have been such a limitation on all of the marks. There has also been a final refusal on this mark an appeal of a final refusal to register the mark is pending before the Trademark Trial and Appeal Board.
Section 2(f) of the Trademark Act, 15 U.S.C. §1052(f), permits the registration of a mark that is not inherently distinctive on the Principal Register upon proof that the mark has acquired distinctiveness in relation to the applicant’s goods or services in commerce.
Three basic types of evidence may be used to establish acquired distinctiveness for claims of §2(f):
A claim of ownership of one or more prior registrations on the Principal Register of the
relevant portion of the mark for goods or services that are the same as or related to those named in the pending application;
A statement verified by the applicant that the
relevant portion of the mark has become distinctive of the applicant’s goods or services by reason of substantially exclusive and continuous use in commerce by the applicant for the five years before the date when the claim of distinctiveness is made; or
Actual evidence of acquired distinctiveness of the
relevant portion of the mark.
In my opinion the marks all should have been forced to disclaim BOOKING.COM.
---------
Stevan Lieberman
Greenberg & Lieberman, LLC
http://www.aplegal.com
