IP Law Daily, TRADEMARK—TTAB: ‘TREEBNB’ composite mark for hotel and lodging services succumbs to Airbnb's opposition challenge, (Jul 24, 2024)

By Saurabh Kashyap, B.A., LL.B., LL.M.

Board found likelihood of confusion with Airbnb's pre-registered, commercially strong, and inherently distinctive AIRBNB mark for similar services.

In a non-precedential decision, the Trademark Trial and Appeal Board (TTAB) sustained Airbnb, Inc.’s opposition to registration of the TREEBNB mark for multiple services, including temporary accommodations. The Board concluded that the TREEBNB mark was likely to cause confusion with Airbnb's well-known AIRBNB mark (Airbnb, Inc v. Bolt, No. 91273632 (T.T.A.B. July 17, 2024)).

Background. The opposer, Airbnb, Inc., is a global community marketplace that allows people to list, discover, and book unique accommodations around the world through its website and mobile app. Founded in 2008, Airbnb has since become a leading platform for arranging temporary housing accommodations and providing online reservation services.

On the other hand, the applicants, Seth, and Victoria Bolt, are individuals offering short-term rentals in treehouses, mirror cabins, and domes at their properties in Whitwell, Tennessee, and Walhalla, South Carolina. Their offerings include additional services such as chef, massage, and yoga for overnight guests.

The applicants applied to register the proposed trademark TREEBNB (composite mark, stylized characters) on the Principal Register under International Class 43 for services including hotel services, restaurant services, arranging temporary housing accommodations, booking of temporary accommodation, and providing information in the field of temporary lodging. The proposed mark had stylized wording “TREEBNB” with a stylized mountain range directly above.

Airbnb opposed the registration on the grounds that "TREEBNB" closely resembled its "AIRBNB" marks, potentially causing consumer confusion.

Entitlement to statutory cause of action. To oppose the registration, Airbnb needed to establish a statutory cause of action, which requires a reasonable belief in damage that would be caused by the registration of the contested mark. Airbnb demonstrated this through its ownership of numerous registrations and common law rights in the AIRBNB mark, showing a direct commercial interest and potential for damage.

Priority. Airbnb's priority was undisputed due to its earlier use and registration of the AIRBNB marks. The Bolts admitted that Airbnb's marks predated their application, establishing Airbnb’s superior rights to the mark.

Likelihood of confusion. The Board's likelihood of confusion analysis, as always, was based on the factors outlined in In re E. I. du Pont de Nemours & Co., focusing on the relatedness of services, channels of trade, conditions of purchase, and the strength of Airbnb's mark.

Relatedness of services, channels of trade, conditions of purchase. Airbnb's and the Bolts’ services were found to be identical or legally identical, as both involved arranging temporary housing accommodations and providing related services. Due to the identical nature of the services, the channels of trade and classes of purchasers were presumed to be the same, further supporting the likelihood of confusion.

Strength of Airbnb’s mark. The AIRBNB mark was deemed inherently distinctive and commercially very strong. Airbnb's extensive use, substantial advertising, media recognition, and enforcement activities solidified its position. The Board considered survey evidence showing significant recognition of the AIRBNB mark among consumers, further establishing its strength.

Similarity of the marks. The comparison of the marks AIRBNB and TREEBNB revealed that despite differences in the initial words (“AIR” and “TREE”), the overall structure and commercial impression were similar. The dominant portion, “BNB,” contributed to a likelihood of confusion, especially given the strength of the AIRBNB mark and the relatedness of the services.

Potential for confusion. A survey conducted by Airbnb showed a significant percentage of respondents were likely to confuse the TREEBNB mark with AIRBNB. This evidence, coupled with the identical services and trade channels, reinforced the Board's conclusion of a likelihood of confusion.

Balancing the factors. After considering all relevant factors, the Board found that the services, customers, and trade channels were identical or legally identical, and that the AIRBNB mark was inherently distinctive and commercially strong. The similarities between the marks outweighed any differences, concluding that the TREEBNB mark would likely cause consumer confusion.

The Board, therefore, sustained Airbnb’s opposition and denied the application for registration of the TREEBNB mark.

The Case is Opposition No. 91273632.

Judge: Kuhlke, K.

Attorneys: Christopher T. Varas (Kilpatrick Townsend & Stockton LLP) for Airbnb, Inc. John D. Griffin (Griffin Law PC) for Seth Bolt and Victoria Bolt.

Companies: Airbnb, Inc.

Cases: Trademark USPTO