Jonathan Pink — Entertainment, Internet and New Media Partner at Lewis Brisbois, LLP Rotating Header Image

No Vacancy at Hotels.com

Such a pity.  Hotels.com tried, tried, tried to obtain a trademark in its name “Hotels.com,” but alas the Court of Appeals for the Fed Circuit ruled the mark was a too generic.  Too generic?  Really?  So, my hopes of getting a trademark in “milkdelivery.com” for my new business delivering milk might run into problems as well?  Generic.  Humph.
 
The Court said that the USPTO’s Trial and Appeal Board’s refusal of the registration was appropriate, and affirmed the TTAB’s rejection of Hotels.com’s argument that the “dot-com” suffix showed converted the generic term “hotels” into a brand name. 
Really going out on a limb there, TTAB; bold, controversial assertion of the law. 
 
Of course, in some deference to Hotels.com (“some,” meaning not a lot, meaning the subtextual “what the hell were you thinking?” still applies), it appears that the website had originally sought to register its mark for the services of “providing information for others about temporary lodging; travel agency services, namely, making reservations and bookings for temporary lodging for others by means of telephone and the global computer network.”  So it wasn’t, e.g., just giving people access to hotels?  Oh, you see that’s where I was mistaken. 
 
Seems the TM examiner had the same thought I did, that “Hotels.com” was “merely descriptive” of hotel reservation services.  (No, it’s for “providing information . . . .”)  In any event: denied.  Possibly without even visiting the site (which looks a lot like a site where you make hotel reservations, folks), the TTAB affirmed the rejection, finding that “hotels” identified “the central focus of the information and reservation services” provided on the site, and concluding that “hotels.com” was therefore simply a term that identified the focus of the service, and was thus “generic for the services themselves.”
 
Hotels.com appealed, arguing that the mark was not generic because the Web site Hotels.com does not provide lodging and meals for its users and isn’t synonymous with the word “hotel.”  It further argued that its name had effectively acquired secondary meaning (or acquired distinctiveness), saying that the mark was widely associated with the company itself, and is not viewed as a generic term or common name for hotel services.
 
The Fed Circuit ruled that “the generic-descriptive-suggestive-arbitrary-fanciful continuum of words and their usage as marks of trade, there is no fixed boundary separating the categories; each word must be considered according to its circumstances.”  In other words, while generic terms cannot themselves be registered as trademarks, descriptives may acquire distinctiveness and serve as a trademark. 
 
But, the Court did not side with Hotels.com that that had happened in this instance.  It agreed with the TTAB that “hotels” identified the core component of the services at issue, and that “hotels.com” was the functional equivalent of granting a service mark to the unadorned word, “hotels,” which it was not about to do.  In short, the Court found that the combination of “hotels” and “.com” did not produce a new meaning when used in combination with one another. It held that “registrability does not depend on the .com combination.”
 
So, Hotels.com is left without registered mark in the brand it has worked so hard to develop.  What does this tell us?  Talk to a trademark attorney before selecting a a mark in which you intend to invest mucho money?  Now there’s an idea! 
Jonathan Pink is a business lawyer with a specialty in copyright, patent and trademark litigation. His clients include many of the biggest names in the automotive and motorcycle aftermarket parts industries, and one of world's largest media companies. He has extensive experience in a wide range of intellectual property and commercial disputes including breach of contract, fraud, and the misappropriation of trade secrets. He can be reached at 949.223.7173, or at jonathan.pink@bryancave.com, and his full profile can be viewed at www.bryancave.com.

Comments are closed.