Hotels.com has lost another round in it’s bid to register Hotels.com as a trademark, after the United States Court of Appeals for the Federal Circuit affirmed the Trademark Trial and Appeal Board’s decision to refuse the registration on the ground that the mark is a ‘generic term’ for hotel information and reservations.
Hotels.com
This decision by the Appeals Court, handed down on July 23, 2009, to affirm the TTAB’s conclusions, effectively makes it very much more difficult to trademark generic terms.
Hotels.com had argued that it does not provide lodging and meals for its users and is not synonymous with the word “hotel”.
They cited survey evidence as establishing that Hotels.com is widely associated with the company, and is not viewed as a generic term or common name for hotel services. 76% of consumers in the survey responded that they view Hotels.com as a brand name, and not as a generic term.
Hotels.com also clarified that it is not a generic term for a hotel, but is used to indicate an information source and travel agency, and that the mark, viewed in its entirety (with the .com), is not a generic name but an indicator of their services.
They pointed out that the context in which a term is used is evidence of how the term is perceived by prospective customers, and that the dot-com domain name is a significant aspect of the context of Hotels.com, negating the genericness finding.
All of this comes across as a pretty convincing argument. But unfortunately for them, the TTAB and the Courts say that registrability does not depend on the .com combination.
The TTAB went one step further, and hauled in other websites which include the term ‘hotels’ in their domain name into the argument , including www.all-hotels.com, www.web-hotels.com and www.my-discount-hotels.com.
Citing these websites as evidence, the TTAB said that it “demonstrates a competitive need for others to use as part of their own domain names and trademarks, the term that applicant is attempting to register.”
Seems they’ve been down this road before, and the Appeals Court also had all the answers ready. They cited the case of Lawyers.com as an example. Figures that a site for lawyers would be the first to make a hash of it for everyone who follows.
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2 Responses
Steve, there’s a difference between run of the mill generic domain names and this case. You say lawyers.com, people think lawyers. But when you say hotels.com, you don’t think about hotels – you think about this online travel site which helps people book hotels.
The key here is ‘online travel site’. This difference can only be understood by someone who is familiar with the world of online travel and the universal name-recognition (brand awareness) that hotels.com has among consumers. Bureaucrats and courts probably don’t understand this, and they’re still operating under the old brick and mortar standards. The Patent and trademark office, I’m afraid, needs to hire some younger staff who actually know their way around the internet.
Thank god for this ruling. Of course there can only be one Hotels.com. This is not why they’ve spent large volumes of money. They have spent the money for one reason…so they could go after anyone and everyone with the hotel or hotels in or as part of their domain with udrp disputes and trademark infringement claims. Anyone who believes otherwise is on something very strong. I am someone who knows. I am the owner of a generic .net and my direct competitor in the same business who owns the corresponding.com which ranks #1 in google throughout all searches related to the industry has hired a lawyer to try to find a way to go after me. Again thank god for the hotels.com ruling. This company now knows they have no trademark case. They have tried to have phony customers call me to see if I would pass myself off as them to no avail and they still persist with even more nefarious schemes as prescibed by their hired guns. Why do they do this you ask? Because millions of dollars of venture capital is on the line if this company can create an online brand out of the generic term. All I want is to do business on the generic domain I rightlfully own. I have a branded corporation as well but the benefits to having both a brand with generics is enormous eg. Campbells Soup owning soups.com. Anyone who thinks that Hotels.com should receive a trademark is not living in the real world as this was nothing but a not so inconsipcuous attempt to eradicate competition and gain market share. Fortunately the courts saw right through this and pulled the curtains closed on them and the rug out from under them.