Thursday, October 12, 2006

"HOTELS.COM" Generic for Temporary Lodging Reservation Services, Says TTAB

Finding the term HOTELS.COM to be generic for "providing information for others about temporary lodging" and "making reservations and booking for temporary lodging," the Board affirmed a requirement that Applicant, L.P. disclaim that term in the mark shown immediately below. In re, L.P., Serial No. 76414272 (September 11, 2006) [not citable].

Is it a Unitary Mark? Applicant maintained that its mark is "unitary" because the literal element HOTELS.COM and the bellman design "are contiguous and actually touch one another" and "create a single commercial impression [such that] the proposed mark cannot be divided into separable components." The Examining Attorney argued that the bellman is separated from the words because "the design element is spatially, slightly forward of the word portion, as if the bellman stepped forward from the wording."

The Board saw the question as "whether the combination is unique" and "one that may not be fragmented." Assessing "how the average purchaser would encounter the [proposed] mark," it noted that in a number of Applicant's advertisements there is a clear separation between the word and design elements, and when the word and design elements appear together they are in "quite different colors." And many pages from an Internet search showed the terms "" and "" without the bellman character at all.

Moreover, the Board found the term HOTELS.COM to be the dominant portion of the composite mark "when viewed from a distance, or when printed in smaller size in an advertisement." As additional evidence, the Board noted that Applicant had pursued separate trademark protection for the term HOTELS.COM and for the bellman design.

Consequently, the Board concluded that the proposed mark is not unitary.

Is HOTEL.COM Generic? The Board found that Applicant's recitation of services provided an "apt specification of the genus," and it deemed the relevant public to be "all customary customers of the services."

Turning to the question of what HOTELS.COM means to the relevant public, Applicant conceded that (despite its deletion of "hotel reservations" from its recitation of services) hotel information and reservation services are still encompassed by the application.

The Board noted the dictionary definitions of "hotel" and ".com," and third-party uses of "" and "" as part of domain names such as "" and ""

Applicant feebly argued that this case is "akin to the case," in that "the addition of the TLD '.com' to 'hotels' expands the meaning of the word hotels, and does not merely form a compound that conveys the meaning of the separate words." The Board, however, rejected that argument, noting that in the term "steelbuilding" had a dual meaning, whereas that is not the case with the term ""

The Board concluded that HOTELS.COM is a generic term, and it therefore affirmed the disclaimer requirement.

However, the Board did offer Applicant a small consolation: based on Applicant's substantial revenues and advertising expenditures, and the number of visitors to the "" website, the Board concluded that, if HOTELS.COM is ultimately held not to be generic, then the PTO's rejection of the 2(f) evidence is reversed.

TTABlog note: The case was TTABlogged here. More "akin" to the subject case was last year's LAWYERS.COM case, TTABlogged here, but relegated to a footnote by Judge Rogers.

Text Copyright John L. Welch 2006.


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