In Airbnb Inc v Seth Bolt and Victoria Bolt, the Trademark Trial and Appeals Board (TTAB) ruled in favour of opposer Airbnb Inc., against applicants Seth and Victoria Bolt. The board’s decision was influenced by, among other things, Airbnb’s strong market presence and the applicants’ use of its website platform to market their properties.
Background
Applicants Seth and Victoria Bolt filed Application No. 90444946 (see below) in January 2021 for “Hotel services; Restaurant services; Arranging temporary housing accommodations; Booking of temporary accommodation; Providing information in the field of temporary lodging and accommodations; Providing temporary accommodation” in Class 43.
Application No 90444946
Airbnb has operated in the short-term rental and hotel booking service industry since 2008 and owns, among others, AIRBNB (Registration No 3890027) for “Arranging temporary housing accommodations; Providing online reservation services for temporary lodging; Providing temporary lodging information via the Internet” in Class 43, along with numerous other registrations and applications for the same mark in other classes.
The Bolts have used Airbnb’s website since 2015 to handle bookings for their luxury treehouse rentals in South Carolina and Tennessee. Airbnb based its opposition on a 2(d) likelihood of confusion claim as well as dilution, but did not provide evidence for the latter.
Decision
In determining the claim, the TTAB turned to the DuPont factors (In re EI du Pont de Nemours & Co, 476 F.2d 1357, 177 USPQ563, 567 (CCPA 1973)). In its analysis, the board primarily considered Factors 1, 2, 3, 4, 5 and 7, combining its analysis of DuPont factors 2, 3 and 4 into the same analysis.
The board found that Factors 2 (nature of goods/services) and 3 (trade channels) favoured confusion, and Factor 4 (purchasing conditions) weighed slightly against confusion due to the baseline level of care a consumer is presumed to take in securing travel accommodations. The goods, “arranging temporary housing accommodations”, were identical between the Bolts’ mark and Airbnb’s registration, with additional services deemed legally identical. Consequently, the board presumed the channels of trade to be identical, noting that the Bolts admitted to using the standard character TREEBNB mark on the Airbnb website since 2015, further aligning the channels of trade.
The board reasoned that Factor 5 (fame of the prior mark) supported confusion, determining the conceptual strength of the mark and the mark’s commercial strength. The board considered the AIRBNB mark to be inherently distinctive, as the registration was on the Principal Register without any claim of acquired distinctiveness.
To determine the AIRBNB mark’s commercial strength, the board reviewed extensive evidence, including surveys, media, references and enforcement records. Convinced by this evidence, the board concluded that the mark was “very strong” and deserved commensurate protection.
The board found Factor 1 (similarity of the marks) to favour confusion, noting that the stated strength of the AIRBNB mark tipped the scales. The board reasoned that the overall structure of each mark was more or less identical, and that the dominant “BNB” component was closely related to the services associated with both marks and not particularly distinguished by the “TREE” or “AIR” components preceding it.
Finally, the board considered Factor 7 (actual confusion) in the abstract, noting that the specific applied-for composite mark had not yet been used in commerce. Instead, the board relied on the likelihood of confusion survey provided by Airbnb, which indicated that 37.5% of respondents expressed confusion regarding the relatedness of the two marks.
Balancing the factors, the board reasoned that the evidence weighed strongly in favour of a likelihood of confusion between the Bolts’ TREEBNB mark and Airbnb’s registrations.
Comment
The board’s decision reaffirms the value that a well-known and well-enforced mark has the potential to provide in an opposition context where coupled with robust evidentiary support, as well as the way in which prior use of a similar mark in the same channel of trade operated by a competitor may sink an application before registration.
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