Adding '.com' to generic term does not make it registrable, says court

United States of America
In In re LP (Case 2008-1429, July 23 2009), the US Court of Appeals for the Federal Circuit has held that the Trademark Trial and Appeal Board (TTAB) had properly rejected an application for the registration of the trademark HOTELS.COM for a website providing hotel information and reservation services. LP, the owner of an online discount website for hotel information and reservation services, applied to register the mark HOTELS.COM on the Principal Register for the following services in Class 43 of the Nice Classification:

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.” 

In support of its application, submitted 64 declarations from customers, vendors and competitors stating that “the term '' is not the common, generic name of any product, service or field of study”. also submitted a Teflon-type, double-blind telephone survey of 277 males and females aged 18 and over in the continental United States who had stayed at a hotel or motel in the past 12 months or planned to do so in the next 12 months. The survey showed that 76% of respondents regarded HOTELS.COM as a brand name for a business that makes hotel reservations and provides information about hotels.

The US Patent and Trademark Office (USPTO) refused registration, finding that:
  • HOTELS.COM was generic and thus incapable of registration under Section 2(f) of the Lanham Act;
  • the mark was merely descriptive of hotel reservation services, in violation of Section 2(e)(1) of the act; and
  •’s evidence of acquired distinctiveness under Section 2(f) of the act was insufficient.
Affirming the USPTO's rejection, the TTAB ruled that the word 'hotels' identified “the central focus of the information and reservation services” provided on's website. Because HOTELS.COM consisted of nothing more than a term that names the central focus of the services at issue, the TTAB found the mark to be generic for these services. According to the TTAB, adding the '.com' designation did not impart registrability to a generic term. The TTAB gave no weight to the declarations, in part because they were identical in form. Moreover, it was “sceptical” of the survey, reasoning that:
  • the survey questions did not adequately reflect the difference between a brand name and a domain name;
  • consumers may automatically equate a domain name with a brand name; and
  • the survey questions were radically skewed in's favour.  
Nevertheless, the TTAB disagreed with the USPTO's view of the inadequacy of the evidence of acquired distinctiveness, stating that if ultimately prevailed in an appeal of the TTAB’s decision that the mark was generic, it would find the evidence of acquired distinctiveness to be sufficient to support registration. appealed to the Federal Circuit, arguing that the TTAB’s consideration of the application was “fundamentally flawed” because it improperly severed the '.com' suffix from the word 'hotels' to find the mark was generic, rather than consider the mark as a whole. further argued that the HOTELS.COM mark was not generic because it did not provide lodging and meals for its users and so was not synonymous with the word 'hotel', as established by the survey results that associated the mark with 

The Federal Circuit disagreed. It commented that adding '.com' did not make the generic term 'hotels' distinctive: “the generic term ‘hotels’ did not lose its generic character by placement in the domain name ''”. In its ruling, the Federal Circuit maintained that while generic terms are not registrable, a term that is descriptive rather than generic may acquire distinctiveness and serve as a trademark. The Federal Circuit stated that:

[i]n 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.”

The court thus affirmed the refusal of registration.

Katrina M Quicker, King & Spalding LLP, Atlanta

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