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Hotels.com Loses Major Trademark Battle

On July 23, 2009 the United States Court of Appeals for the Federal Circuit decided, in In re Hotels.com, L.P., that Hotels.com was not entitled to a federal registration for its service mark HOTELS.COM. (For a brief overview of trademarks and service marks, see Trademark Protection in One Easy Lesson.)

Background: Hotels.com 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.? The Trademark Trial and Appeal Board (TTAB) refused the registration on the ground that the mark is a generic term for these services (generic terms, by definition, are incapable of indicating the source of goods or services).

In affirming the decision of the TTAB, the court made the following points:

  • The term “hotels” did not lost its generic nature by being combined with “.com”.
  • The term ?hotels.com? appears in the? domain names of various other websites, such as www.all-hotels.com, www.web-hotels.com, www.my-discount-hotels.com, that provide hotel information and reservation services, supporting the conclusion that ?hotels? indicates the genus of hotel information and reservation services.
  • Survey results showing that 76% of respondents considered Hotels.com a brand name rather than a common name could be received skeptically by the TTAB because the survey questions radically skewed the survey results.

The significance of this decision for entrepreneurs: It may be great, from the business perspective, to have a domain name based on a commonly-needed product or service, but you need to anticipate that other businesses will use similar names, and you will not be able to stop them.

This blog does not provide legal advice and does not create an attorney-client relationship. If you need legal advice, please contact an attorney directly.