The U.S. Court of Appeals for the Federal Circuit recently affirmed a decision by the Trademark Trial and Appeal Board, refusing registration of the mark “hotels.com” because it is generic. In re Hotels.com, Case No. 2008-1429 (Fed. Cir., July 23, 2009) (Newman, J.).
Hotels.com originally applied to register a service mark, “hotels.com,” for the service of providing information, specifically, “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.” During prosecution, applicant argued that its mark was registrable, and not descriptive, because the company is in the business of providing information, not providing hotel services.
The trademark examiner disagreed and denied registration on the basis that “hotels.com” is merely descriptive of hotel reservation services. Hotels.com appealed the rejection, but the examiner’s decision was affirmed. The Board found that the word “hotels” identified “the central focus of the information and reservation services” provided on the Hotels.com website and consequently held 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.” Moreover, the Board found that the addition of “.com” to a mark “did not impart registrability to a generic term.” Hotels.com appealed.
At the Federal Circuit, Hotels.com argued that its mark was not generic because its website does not provide lodging and meals for its users, i.e., it is not a hotel. It argued that, therefore, the mark, is not synonymous with the word “hotel.” Instead, Hotels.com argued, its “hotels.com” mark is associated with the company itself, and is not publicly viewed as a generic term or a common name for hotel services.
The Federal Circuit, after noting that although generic terms cannot be registered as trademarks but that descriptive terms can acquire distinctiveness and become trademarked, concluded that adding “.com” to a mark is not a method by which a descriptive term can become distinctive. The Court further noted that the addition of “.com” to the mark did not render a new meaning to the term “hotels.”
Thus, the Court affirmed the Board and concluded that the term “hotels.com” has the same meaning as the word “hotels” by itself and that the term is descriptive of the company’s services: providing information and reservation services for hotels.