July/August 2009 Issue

Civil Cases

In re Hotels.com L.P.,
91 USPQ2d 1532 (Fed. Cir. July 23, 2009)

ABSTRACT
The TTAB rejected Applicant’s attempt to register HOTELS.COM, finding the mark generic for Applicant’s information and reservation services.  The TTAB found that the term “hotels” identified the central focus of an Applicant's online information and reservation services, and that the addition of the common “.com” suffix did not cure the genericness of the term.  The Federal Circuit affirmed, finding that the TTAB had established a prima facie case of genericness of the mark HOTELS.COM through dictionary evidence, evidence of other similar uses, and competitive need.  The Federal Circuit further found that Applicant’s survey and declaration evidence was insufficient to overcome this prima facie case.

CASE SUMMARY

FACTS
Hotels.com, L.P. (“Applicant”) applied to register the service mark HOTELS.COM 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.”  The Examining Attorney denied registration on the ground that HOTELS.COM is merely descriptive of hotel-reservation services, and that Applicant’s evidence was insufficient to show acquired distinctiveness under Section 2(f).  The examiner also stated that the proposed mark appeared to be generic.  The TTAB affirmed the rejection, but on the ground that HOTELS.COM is a generic term for hotel information and reservations, and that the “.com” shows Internet commerce and does not convert the generic term “hotels” into a brand name.  The TTAB explained that the word “hotels” identifies the central focus of the information and reservation services provided on Applicant’s website, and concluded that “the term HOTELS.COM, consisting of nothing more than a term that names that central focus of the services, is generic for the services themselves.”  The TTAB did not agree with the Examining Attorney’s view of the inadequacy of the showing of acquired distinctiveness, and stated that “if applicant should ultimately prevail in any appeal of this decision, we find in the alternative that the evidence of acquired distinctiveness is sufficient to support registration under Section 2(f).”  Applicant appealed.

ANALYSIS
On appeal, Applicant argued that HOTELS.COM is not generic because the website does not provide lodging and meals for its users and is not synonymous with the word “hotel,” but rather is used to indicate an information source and travel agency.   Applicant stated that the “.com” component of HOTELS.COM negates any generic nature of the word “hotels,” and that the mark, viewed in its entirety, is not a generic name but an indicator of Applicant’s services.  Applicant pointed out that the context in which a term is used is evidence of how the term is perceived by prospective customers, and that the dot-com domain name is a significant aspect of the context of HOTELS.COM, negating the genericness finding.  Applicant also relied on the survey and declarations it submitted as evidence establishing that HOTELS.COM is widely associated with the Applicant, and is not viewed as a generic term or common name for hotel services.  

The Federal Circuit first summarized the TTAB’s findings.  The TTAB cited various definitions of “hotel” and various search printouts showing “hotels” as the equivalent of or included within “temporary lodging.”  The TTAB also cited computer printouts of the HOTELS.COM website featuring links to hotels, as well as the Applicant’s advertisements promoting the HOTELS.COM website and the hotel-reservation services available on that website, and the Applicant’s online market survey asking visitors to list any other “hotel sites they frequent.”  The TTAB also listed several sites that combine “hotels” and “.com.”  The TTAB found that hotels are the “focus” of the Applicant’s services, citing the Applicant’s advertisements to “[c]hoose from thousands of hotels in hundreds of cities worldwide” by visiting www.hotels.com; directing the public to “[b]ook online at www.hotels.com” and stating that “hotels.com enables you to quickly and efficiently compare accommodations by:  price, quality, location . . . amenities, availability . . . .”  With this evidence, the TTAB concluded that HOTELS.COM is properly viewed as having the same meaning as the word “hotels” by itself, and that the composite term HOTELS.COM communicates no more than the common meanings of the individual components, that is, that the Applicant operates a commercial website via the Internet, which provides information about hotels but adds nothing as an indication of source.

The Federal Circuit affirmed.  It stated that otherwise registrable marks do not acquire generic character by participating in electronic commerce but agreed with the TTAB that for the mark at issue here, the generic term “hotels” did not lose its generic character by placement in the domain name HOTELS.COM.  The Federal Circuit also found that numerous other domain names’ use of the components of the term “hotels.com” supported the TTAB’s finding that consumers viewing Applicant’s website and promotional materials would immediately understand that HOTELS.COM identifies a website that provides such services.  The Federal Circuit further found a competitive need for others to use “hotels” as part of their own domain names and trademarks.  All this amounted to “a prima facie case of genericness.”

In the face of this prima facie case, the Federal Circuit found Applicant’s rebuttal evidence lacking.  Applicant submitted sixty-four declarations from customers, vendors, and competitors, each of whom stated that “the term HOTELS.COM is not the common, generic name of any product, service, or field of study.”  The TTAB wholly rejected the declarations as identical form documents and found that they did not provide any explanation of the declarant’s conclusion or state the declarant’s view of how the term HOTELS.COM is perceived by the public.  The Federal Circuit found that this complete rejection was unwarranted, but also that these declarations did not negate the TTAB’s ultimate conclusion.

Applicant also relied on its survey, which purported to show that 76% of respondents regarded HOTELS.COM as a brand name for a business that makes hotel reservations and provides information about hotels.  The TTAB criticized the survey on several grounds, particularly that the survey questions skewed the results in Applicant’s favor and that the survey design did not adequately reflect the difference between a brand name and a domain name.  The Federal Circuit seemed to credit the TTAB’s critiques.

Applicant argued that the sixty-four declarations and the extensive survey evidence showed that HOTELS.COM is perceived by the relevant public “not as referring to a class or category of the services recited in the Appellant’s application, but, rather, as referring to a brand of such services originating from one and only one source—[Applicant].”  However, the Federal Circuit found that 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, and affirmed the refusal of registration.

CONCLUSION
This decision establishes that adding the “.com” suffix to a term, which would otherwise be generic for given Internet services, does not transform the term into a nongeneric mark.  Also interesting is the TTAB’s finding that Applicant had made a sufficient showing of secondary meaning in the event that its mark were found to be merely descriptive.  This indicates that even apparently strong evidence of acquired distinctiveness will sometimes fail to overcome a prima facie case of genericness based on dictionary and third-party-use evidence.