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.
posted by John L. Welch @ 7/24/2009
7 comments
7 Comments:
If the policy of not registering generic marks is that everyone should be able to use them, then HOTELS.COM should not be considered generic because only one party can use HOTELS.COM. I think we need to question whether .COM really does have a source-identifying function. I think that in cases like this the .COM serves the role of identifying just one source because people know that there can be just one owner of the HOTELS.COM website.
I would disagree with Mr. Poret. Several circuits courts have rejected the Teflon format completely in this type of case because it was designed to determine whether an arbitrary coined term "TEFLON" had BECOME generic in the minds of consumers through its use in commerce for a long period of time. See Miller Brewing (7th Cir.); Hunt Masters (4th Cir.); Schwan's IP (8th Cir). Survey respondents' impressions of a descriptive/generic term such as HOTELS.COM that has been in use in commerce and has claimed acquired distinctiveness may be influenced by that use in commerce. Therefore, the survey would likely show that the term had acquired distinctiveness. And use in commerce cannot make a generic term protectible. Additionally, if one of his survey examples for generic terms is "LAWYERS.COM," which was almost an identical case for genericness to HOTELS.COM, can HOTELS.COM really be non-generic because they found consumers in a survey have come to associate the term with a single source? Again, generic terms cannot acquire distinctiveness. His "more open-ended" approach is similarly flawed, and probably more so, because it's merely asking them for their impressions based on advertising in commerce. Noone disputes that HOTELS.COM provides those services. 2(f) again. The mere fact that consumers associate a generic term with a single source doesn't make it protectibe.
I agree with Frank. I think the public's perception of what ".com" names represent has changed greatly over the last 10 years. As many "[generic word].com" names have made their way during that period from their initial cybersquatter owners into the hands of actual companies that use them commercially, people have similarly come to view these as commercial sites of single source. I found it highly curious that, in affirming the TTAB's decision to discount the survey, the CAFC actually quoted the TTAB's statement that “consumers may automatically equate a domain name with a brand name.” I agree with this statement, but I have a hard time seeing how saying that is NOT admitting that ".com" names now function as trademarks. So if that's the commercial reality nowadays, why blindly adhere to the rule that adding ".com" doesn't add any distinctiveness?
One possible impact: Can Hotels.com, L.P. stop others from buying the AdWord "hotels.com" if it lacks a services mark registration?
The reason generic .com marks cannot be registered is because, even though they have exclusive rights to the address, they could argue likelihood of confusion with similar addresses such as hotel.com, VAhotels.com, or other slighltly different web addresses. It would promote litigation, much like the registration of other descriptive or generic terms.
"As a practical matter, what would a service mark registration give the Applicant that ownership of the domain name does not?"
Maybe, if you forget to renew the name no one can use use it like in the Bodog case? Other than that, it's just $350 or a few thousands for larger corporations that use lawyers to get a trademark so why not have that too, just in case?
Now, let's assume that Hotels.com was registered and that Hotel.com is an independent site. Could Hotels.com go after Hotel.com for trademark infringement given the similarities or does the .com version of the trademark cover the exact word /tld? Exxon would sue Exon in a heartbeat, especially if they were in the same field. Does this apply to the .com trademarks? Or flowers.com vs freshflowers.com, Cars.com vs Car.com ?
Thank god for this ruling. Of course there can only be one Hotels.com. This is not why they've spent large volumes of money. They have spent the money for one reason...so they could go after anyone and everyone with the hotel or hotels in or as part of their domain with udrp disputes and trademark infringement claims. Anyone who believes otherwise is on something very strong. I am someone who knows. I am the owner of a generic .net and my direct competitor in the same business who owns the corresponding.com which ranks #1 in google throughout all searches related to the industry has hired a lawyer to try to find a way to go after me. Again thank god for the hotels.com ruling. This company now knows they have no trademark case. They have tried to have phony customers call me to see if I would pass myself off as them to no avail and they still persist with even more nefarious schemes as prescibed by their hired guns. Why do they do this you ask? Because millions of dollars of venture capital is on the line if this company can create an online brand out of the generic term. All I want is to do business on the generic domain I rightlfully own. I have a branded corporation as well but the benefits to having both a brand with generics is enormous eg. Campbells Soup owning soups.com. Anyone who thinks that Hotels.com should receive a trademark is not living in the real world as this was nothing but a not so inconsipcuous attempt to eradicate competition and gain market share. Fortunately the courts saw right through this and pulled the curtains closed on them and the rug out from under them.
Post a Comment
<< Home