Hotels.com Trademark Appeal Sent Packing
- by Wendy Davis @wendyndavis, July 24, 2009
A federal appeals court has
ruled that the term "Hotels.com" can't be trademarked because "hotels" is too generic. The hotel information and booking site Hotels.com had argued that even if the word "hotels" is generic, adding a dot-com to it resulted in a term that should be given trademark protection.
But the U.S. Court of Appeals for the federal circuit disagreed. "The generic term 'hotels' did not lose its generic character by placement in the domain name Hotels.Com," the court wrote in a decision issued Thursday. The ruling upheld an earlier determination by the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office.
Last year, that board said it was not persuaded by Hotels.com's evidence that consumers viewed the domain name as associated with the company. Hotels.com had presented a survey showing that 76% of 277 respondents viewed Hotels.com as a brand name.
But the board found fault with that study, concluding that "the survey design did not adequately reflect the difference between a brand name and a domain name," according to the appellate opinion.
Among other potential effects of the appellate ruling, it means that Hotels.com would likely have a difficult time suing when other companies use the term "hotels.com" to trigger ads on Google or other search engines.
On Friday, a Google search for "hotels.com" yielded pay-per-click ads for the site itself as well as Travelocity, Priceline and others.
I hope the Hotels.com people see the positive in this story. The news element to this story, especially around marketing circles, results in more publicity for the site.
They didn't "lose" on this one. They "won" a round of publicity amongst potential customers.
It was the right decision. Many folks who type in hotels.com into a browser search box are looking for hotels in general and don't really understand that it is company behind that site.
That is the risk you take when you make your brand a generic word...
I believe that hotels.com should have a right to a limited weak trademark in the usage of "hotel.com". As an <a href="http://www.web20lawyer.com">Internet Lawyer</a>, i deal with these trademark registrations often for domain names. While a domain name cannot have a greater IP right than the name alone, it does seem that after common usage for many years, consumers are likely to associate the term hotels.com with a particular entity.