Adding “.com” to a Descriptive Term Does Not Create Distinctiveness to Support Trademark Registration
July 23, 2009
Last Month at the Federal Circuit - August 2009
Judges: Michel, Newman (author), Gajarsa
[Appealed from: TTAB]
In In re Hotels.com, L.P., No. 08-1429 (Fed. Cir. July 23, 2009), the Federal Circuit affirmed the TTAB’s decision to refuse registration of the service mark HOTELS.COM for the services of “providing information for others about temporary lodging; travel agency services,” on the ground that the mark was a generic term for such services.
On application for registration, the examiner had denied registration on the ground that the mark was merely descriptive of hotel reservation services, and the applicant’s evidence was insufficient to show acquired distinctiveness under section 2(f) of the Lanham Trademark Act. The TTAB affirmed the rejection, holding that HOTELS.COM was a generic term for hotel information and reservations. The TTAB concluded that the dot-com suffix indicated only that it related to Internet commerce but did not convert the generic term “hotels” into a brand name.
On appeal, the Federal Circuit first noted that it is the PTO’s burden to establish that a term is generic, and whether a particular term is generic is a question of fact. Slip op. at 3. Moreover, the Federal Circuit explained that the question of “[w]hether a term is entitled to trademark status turns on how the mark is understood by the purchasing public.” Id. at 5 (citing In re Montrachet S.A., 878 F.2d 375, 376 (Fed. Cir. 1989)). The Federal Circuit also stated that it discerned “no error in the [TTAB’s] consideration of the word ‘hotels’ for genericness separate from the ‘.com’ suffix.” Id. at 7.
In holding that the evidence relied on by the TTAB supported a prima facie case of genericness, the Federal Circuit found compelling the TTAB’s demonstration that the components of the term “hotels.com” were used in various domain names, such as www.all-hotels.com and www.web-hotels.com, as well as other websites that provided hotel information and reservation services. Id. at 8. The Federal Circuit also highlighted the TTAB’s finding that the applicant’s website and promotional materials, as well as the websites of third parties, clearly indicated that “consumers who [were] interested in finding information about hotels or making reservations at hotels, would immediately understand that HOTELS.COM identifie[d] a website that provides such services.” Id.
Moreover, in commenting on the applicant’s presentation of rebuttal evidence in the form of a consumer research survey, the Federal Circuit emphasized that the “[s]urvey evidence [was] subject to review for its probative value, based on factors including the design of the survey, the questions asked, and the experience of the surveyor.” Id. at 10. Additionally, the Federal Circuit favorably noted the TTAB’s reasoning that “consumers may automatically equate a domain name with a brand name,” and its findings that (1) the survey questions “radically skew[ed] the results of the survey in applicant’s favor,” (2) the survey did not establish that the public viewed HOTELS.COM as a brand name for services from a unique source, and (3) the survey did not adequately reflect the difference between a brand name and a domain name. Id. (alteration in original).
Finally, based on the entirety of the evidence before the TTAB, the Federal Circuit held that the TTAB could reasonably have given controlling weight to the large number of similar usages of “hotels” with a dot-com suffix, the common meaning and dictionary definition of “hotels,” and the standard usage of “.com” being indicative of a commercial Internet domain in order to conclude that HOTELS.COM was a generic term for hotel information and reservations, and therefore deny registration of the mark HOTELS.COM. Id. at 10-11. Accordingly, the Court affirmed the refusal of the registration.
Summary authored by Meenakshy Chakravorty, Esq.