CAFC Affirms TTAB's Genericness Refusal of "HOTELS.COM"
The U.S. Court of Appeals for the Federal Circuit affirmed the TTAB's judgment in the HOTELS.COM case, in which the Board found (here) the term to be generic for "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." (TTABlogged here). In re Hotels.com, L.P., 91 USPQ2d 1532 (Fed. Cir. 2009).
The Board relied on definitions, websites, and similar "hotel" domain names, in finding that hotels are the "focus" of Applicant's services. It further found that the composite term HOTELS.COM connotes nothing more for trademark purposes than the common meanings of the component words: i.e., the ".com" suffix indicates that Applicant operates a commercial website via the internet that provides information about hotels, but it adds nothing to indicate source.
Applicant submitted sixty-four declarations from customers, vendors, and competitors, stating that "the term HOTELS.COM is not the common, generic name of any product, services, or field of study." The Board gave no weight to these declarations, in part because they were identical in form. The court found the total rejection of this evidence to be unwarranted, but nevertheless it ruled that the declarations "do not negate the TTAB's ultimate conclusion."
Applicant also submitted a Teflon-type survey purportedly showing that 76% of respondents regarded HOTELS.COM as a brand name. The TTAB was "skeptical'' of the survey, reasoning that "consumers may automatically equate a domain name with a brand name." It concluded that the survey questions "radically skew[ed] the results of the survey in applicant's favor" and "did not adequately reflect the difference between a brand name and a domain name."
The court, bearing in mind that genericness must be established by clear evidence, sided with the Board:
... on the entirety of the evidence before the TTAB, and with cognizance of the standard and burden of proof borne by the PTO, the TTAB could reasonably have given controlling weight to the large number of similar usages of “hotels” with a dot-com suffix, as well as the common meaning and dictionary definition of “hotels” and the standard usage of “.com” to show a commercial internet domain. We conclude that the Board satisfied its evidentiary burden, by demonstrating that the separate terms “hotel” and “.com” in combination have a meaning identical to the common meaning of the separate components. The Board’s finding that HOTELS.COM is generic was supported by substantial evidence.
And so the court affirmed the refusal of registration.
TTABlog note: I asked my go-to guy on surveys, Hal Poret, for his comments on Applicant's survey. He said this:
I agree with the TTAB and court that the classic Teflon format is problematic in the case of "dot.com" marks because people know that only one company can use a particular domain name and many would therefore assume that any "dot.com" name designates a particular source and is not a "common" name. When I have done surveys for dot.com marks, I have attempted to address this problem by incorporating a discussion of domain names into the traditional Teflon introduction and by having most or all of the terms in a Teflon survey be dot.com marks. By doing so, the respondent cannot simply assume all dot.com names shown are brands. The "brand" percentage for the tested dot.com mark can then be placed on a spectrum including true dot.com brands like amazon.com and truly generic sounding names like lawyers.com. However, a more open-ended approach to testing genericness may be more compelling for certain dot.com marks. For instance, if respondents had been asked to name particular companies or brands that offer hotel or travel-related services over the internet, and a high percentage had named HOTELS.COM (which seems conceivable), this may have been more convincing proof that HOTELS.COM is perceived as a brand.
TTABlog question: As a practical matter, what would a service mark registration give the Applicant that ownership of the domain name does not?
Text Copyright John L. Welch 2009.