Hotels.com Trademark Denied Check-in by Appeals Court
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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4 Responses
i agree with this ruling.
that’s the risk one takes when you run with a word that directly relates to what you do. if hotels.com sold widgets online, then they’d be able to register a trademark for hotels.com in the widgets category.
But they have obviously tried to register in a category related to online travel and accommodation, and allowing of such a trademark would threaten other sites with hotels in their name.
plus to boot, in the long term i think real names like wotif, expedia, kayak are more likely of dominating a category. Hotels.com did well because it was one of the earliest sites, got good seo and was backed by plenty of capital. Will hotels.com grow their market share over the next few years? i doubt it!
Steve
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.
P Ling – na don’t agree.
i think i understand your point, in that you support the argument that hotels.com has become synonymous with a hotels comparison site and therefore should be protected with a trademark.
To some extent i agree it is synonymous but i don’t think it counts as much when hotels.com becomes synonymous with hotel comparison site, compared to when wotif.com become synonymous with hotel comparison or kayak with travel search.
wotif.com will be protected and hotels.com not, because wotif is a word not literally descriptive of what it does. there are literally thousands of sites that use hotels in their name and they’d also claim to some extent that they are synonymous with hotels i.e. hotelclub etc.
generics have their benefits but also their drawbacks i.e. hard to get a registered trademark for. i have experience with both and with latest venture we have trademarks in four categories all over the world because our name is not generically descriptive of what we do.
[...] online website Hotels.com was also dealt a blow in the US last month as the court of appeal there refused to allow it to register its name as a…. Apparently, Lawyers.com met the same [...]