Our Chicago trademark litigation lawyers noticed a recent trademark law decision that underscores the difficulty of protecting a mark in the emerging world of Internet commerce. The Federal Circuit Court of Appeals ruled July 30 that the hotel review and search Web site Hotels.com may not trademark its name because “Hotels.com” is a generic term. In Re Hotels.com, L.P., 08-1429 (Fed. Cir., July 30, 2009). Hotels.com had argued that it is distinct from the generic word “hotels” because it is not a hotel that provides lodging; it is a Web site that provides information about finding lodging at a discount, travel agency services and related services. The Federal Circuit disagreed, saying the addition of “.com” was not enough to remove the generic nature of the name.
To get to the appeals court, the Hotels.com application was first denied by a trademark examiner, then by the Trademark Trial and Appeal Board (TTAB). The examiner denied the application because the name “Hotels.com” was “merely descriptive of hotel reservation services,” meaning that it fails the distinctiveness requirement laid out by the Lanham Act. In doing so, the examiner rejected evidence Hotels.com offered to show that it had acquired distinctiveness, including surveys showing that the majority of respondents associated the name “Hotels.com” with its business. On appeal, the TTAB agreed that the term was too generic to trademark, but said acquired distinctiveness may be enough to support registration if the site succeeded on appeal.
In its appeal to the Federal Circuit, Hotels.com argued that its proposed mark is not generic because it is not a hotel in the business of providing lodging; it is a Web site in the business of providing information about hotels. It also argued that its surveys show that consumers associate the name “Hotels.com” with its business and do not see it as generic. Relying largely on the TTAB’s analysis, the court rejected these claims.
Addressing the issue of genericness first, the Federal Circuit found that the TTAB did not err when it considered the word “hotels” for genericness separate from the “.com” suffix. That board found that both “hotels” and “.com” were generic, and Hotels.com did not have the only URL that combined the two words. They do not produce a new meaning in combination or indicate source, the TTAB said, and thus the combination is generic. Furthermore, the TTAB argued, the existence of other sites incorporating “hotels” and “.com” shows that there’s a need to protect competitors who would use the proposed mark in their own names. The appeals court agreed, pointing out a similar decision in the case of Lawyers.com, In re Reed Elsevier Props., Inc., 482 F.3d 1376, 1378 (Fed. Cir. 2007).
The circuit court next tackled the evidence of distinctiveness offered by Hotels.com. This includes 64 declarations by the company’s customers, competitors and vendors that Hotels.com is not a generic name. The TTAB dismissed these outright as form letters. While the Federal Circuit found that rejected “unwarranted,” it said they were negated by the totality of other evidence. It next turned to a survey commissioned by Hotels.com, which found that 76% of respondents believed “Hotels.com” was a brand name. The TTAB criticized the design of this study, saying it was skewed in the company’s favor. It also said that respondents may associated a domain name with a brand name. The Federal Circuit took it one step further, suggesting that the TTAB could easily have made its decision on the basis of the genericness evidence alone. Thus, it concluded, the TTAB met its burden of proof and should not be overturned.
If this decision stands, it leaves Hotels.com vulnerable to trademark infringement, since it cannot threaten a lawsuit to stop infringement or recover damages for the business it may lose. As Illinois online trademark litigation attorneys, we work hard to prevent that sort of exploitation of our clients’ hard-earned business names and goodwill. At DiTommaso-Lubin, we have represented multiple companies in these kinds of issues, in Illinois and throughout the United States. We’re proud of our strong record of success in intellectual property litigation. Our Chicago and Wheaton trial attorneys represent clients in both traditional offline infringement and the growing area of online trademark infringement and trade libel.
If your company is facing trademark infringement litigation, DiTommaso-Lubin can help. To set up a consultation with an experienced Wheaton, Naperville, Aurora, Elgin and Chicago Internet product disparagement lawyer, you can reach us toll-free at 1-866-990-4990 or contact us through the Internet.