Thanks to the U.S. Court of Appeals for the Federal Circuit, it is now clear that “hotel” is a generic word. Hotels.com attempted to register the mark for the services of “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”; however, the application was denied by the trademark examiner because the term is a generic one for these services.
In September 2006, Hotels.com appealed to the Trademark Trial and Appeal Board (TTAB). After considering the evidence, including dictionary definitions of the terms “accommodation”, “reservation”, “hotels” and “.com”, as well as the fact that the term “hotel” is used in several other domain names (for example, web-hotels.com), the TTAB upheld the decision that the term hotels.com was generic. On appeal, Hotels.com argued that the literal element “hotels.com” and the bellman design are unitary and cannot be separated. The TTAB did not focus on whether or not the elements could be separated, but rather declined to find unity because there was a clear distinction between the words and the design, and because the words “hotels.com” frequently appeared separately from, or entirely without, the bellman design. Furthermore, the TTAB held that the addition of the “.com” to the generic word “hotel” did not serve to indicate source.
In 2008, Hotels.com submitted survey evidence of a “national blind telephone survey” to the TTAB in an attempt to overcome the prior ruling. In the telephone survey, 76% of respondents answered that “hotels.com” was a brand name. Hotels.com argued that this showed that the term “hotels.com” had become associated with its company and that the term is not viewed by the public as being generic. The TTAB criticized the survey for not clearly determining whether the participants were able to appreciate the difference between a domain name and a brand name. Survey expert Hal Poret, agrees with the assessment of the TTAB because people tend to assume that since “.com” names can only be used by one company, it must follow that the “.com” name therefore indicates a specific source. The TTAB found the survey evidence did not hold any weight and upheld its previous decision. Hotels.com appealed to the U.S. Court of Appeals for the Federal Circuit.
In late July 2009, the United States Court of Appeals for the Federal Circuit decided that “hotels.com” is not able to be registered as a service mark, affirming the original decision of the trademark examiner and the TTAB, and the Court held that the TTAB had clear and sufficient evidence to make this finding. Some commentators were surprised by this decision, citing the fact that there is only one “hotels.com” as a reason why the company should have been allowed to register the mark. As stated by Mr. Poret, this is a common misconception that many people hold – simply because there can only be one owner of a domain name does not necessarily mean that the term legally indicates source. Unfortunately, this is a lesson that Hotels.com had to learn the hard way.