Fed. Cir. Affirms Trademark Office Decision re Hotels.com

On another legal/internet related note, the Federal Circuit U.S. Court of Appeals held back in July that Hotels.com L.P. may not be properly awarded a registration to the trademark carrying the same name.  The Court was tasked to review the decision made by the US Trademark office that denied Hotels.com L.P. registration as the requested mark was deemed generic.  The court stated that the application of a .com to the end of a generic term (i.e. hotels) does not make the generic term that describes the service trademarkable.

The Court focused much of its decision on Hotels.com’s argument that the application of .com to a generic term negates the invalidity of the mark stating, “Otherwise registrable marks do not acquire generic character by participating in electronic commerce; for as the TTAB pointed out, registrability does not depend on the .com combination at issue, the generic term “hotels” did not lose its generic character by placement in the domain name HOTELS.COM.”  The Court further mentioned that the need for others to use the term hotels in their own marks and domain names supported the decision. Hotels.com offered surveys showing that the consumer had associated the mark with the company and that over time the mark had indeed acquired distinctiveness, which would have made it trademarkable. Even with surveys Hotels.com could not win the court’s favor as they indicated that even a strong showing of distinctiveness might not overcome the generic nature of the term pursuant to a dictionary interpretation.

Word to the wise, it is extremely important to get protection of your trademark and the domain name of your company.  There is an increasing amount of litigation taking place surrounding these very issues, highlighting its importance to these companies who pour thousands of dollars into litigation costs.  You need to build on the mistakes of others and apply these holdings to your own business strategies.  For now, one thing is for certain, if you try to trademark a generic term be it alone or with a suffix like .com, the trademark office will reject your claim.  You are much better off taking the time to think of a creative or fanciful mark that would prove to be totally distinct to your company.



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