Hotels.com Not Unique Enough To Get A Trademark

from the the-.com-isn't-unique? dept

Eric Goldman points us to the news that Hotels.com has had the trademark application on its own name rejected (warning: pdf) as being too generic. I have to admit I’m really, really surprised about this. I would think that the combination of “hotels” with a “.com” on the end switches it from being generic to distinct, since there’s only one hotels.com. However, the trademark board and the court note that there are lots of other sites that use a combination of hotels and .com, such as www.all-hotels.com, www.web-hotels.com, www.my-discount-hotels.com. That could be true, but I think those are all different enough themselves from the straight hotels.com that even getting a trademark on hotels.com alone shouldn’t prohibit those other sites from existing. But that’s not what the court found, noting that hotels.com itself was perfectly generic and unprotectable by trademark. It’s not clear how much this would actually matter, since anyone else using the phrase will ultimately end up helping to advertise hotels.com itself. However, it does raise significant questions about trademarks on other generic words plus a .com at the end.

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Companies: hotels.com

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Comments on “Hotels.com Not Unique Enough To Get A Trademark”

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23 Comments
Tristinsays:

Bravo

I say the harder it is to get a trademark, patent, copyright, etc., the better off the whole system is. There has been far too much of a shoot-first-ask-questions-later approach to IP in the last several years. The IP offices seem content to allow just about anything and require other companies to fight the battle to invalidate patents, trademarks, etc. (e.g. Blackboard). It’s hard to see this causing the hotels.com people any serious distress, other than that they won’t be able to sue half the internet now.

I don’t see how this can be seen as troubling. How could another company use “hotels.com” to profit wrongly from hotels.com’s image? As Mike said, anyone mentioning it would only help send traffic to hotels.com. Show me how this causes problems.

Scott Owenssays:

They can still trademark their logo. I ran into this problem when applying for a trademark. The words in the brand were too generic, but a stylized logo could be trademarked which I think is perfectly suitable in this case. It gives them a certain amount of protection while preventing them from potentially getting broad ownership of the word hotels.com and then trying to sue any other website that contains the word hotels and a .com

Re:Bravo

I have to say that I agree with Tristan here… specifically, “the harder it is to get a trademark, patent, copyright, etc., the better off the whole system is.”

The more rigorous a review is undertaken before IP rights are granted, the more valuable these rights actually are to rights holders. The amount of uncertainty, in terms of what action constitute infringement, is reduced because there will be a rigorous review should result in the clearer definition of the scope of such rights.

That being said, I believe that hotels.com, as a unitary mark, is arguably distinctive enough to warrant trademark protection.

Tinosays:

what if goods/services have nothing to do with hotels?

Examining a mark requires considering the mark itself and the goods are services the mark purports to identify. What if “hotels.com” were being used to identify a site having nothing to do with hotels? Then it could no longer be a generic mark and so it should be allowable? What if you wanted to sell “hotels.com” brand cola and you had no intention of even maintaining a site? Then the exact same mark would be “arbitrary and fanciful” and therefore entitled to registration?

Tinosays:

what if goods/services have nothing to do with hotels?

Examining a mark requires considering the mark itself and the goods are services the mark purports to identify. What if “hotels.com” were being used to identify a site having nothing to do with hotels? Then it could no longer be a generic mark and so it should be allowable? What if you wanted to sell “hotels.com” brand cola and you had no intention of even maintaining a site? Then the exact same mark would be “arbitrary and fanciful” and therefore entitled to registration?

Lancesays:

And yet...

Microsoft has been allowed to hold onto the trademark name “Windows”? Not only have they been allowed to hold onto the name, they have successfully sued another company because the “moron on the street” might have confused Lindows with Windows.

I’m not looking to start a anti-Microsoft rant, rather I am saying that the use of a generic term in a trademark has a precedence. In light of this ruling, should the above mentioned trademark also be revoked?

John Doesays:

Yes, but...

If they had gotten the trademark, it is possible they would then turn around and sue every other website with hotels and .com in their name. Trademark abuse is rampant, so I am glad to see they didn’t get the mark. But like you said, did they really need it? There can be only one hotels.com so there is no chance of someone else operating under the same name.

Anonymoussays:

Re:

Yes, but the use of the word “lettuce” was for restaurants only. Indeed, they were the ONLY company who had EVER trademarked the word lettuce in conjunction with a restaurant.

On the other hand, try trademarking “lettuce” with respect to growing lettuce. THAT is where the generic comes in. If the “hotels.com” people were trademarking “hotels.com with respect to, for example, dog houses, they probably would have gotten the trademark.

Mike Masnick’s surprise is ill-placed. The USPTO properly rejected the application.

ASHsays:

Actually, this ruling doesn’t really break any new ground, other than to apply the same trademark laws that have been around for ages to internet addresses, which has probably happened before anyway.

The key in establishing a trademark is associating your particular name in the public’s mind with your particular company and nobody else’s. That’s why trademark law, on the surface, seems counterintuitive: the LESS a name has in common with the product, the MORE likely it will qualify for a trademark–because if the name and the product seem totally unrelated, but the public connects the two anyway, then it’s only because of a company’s efforts to establish that as its trademark.

For example, Adobe Acrobat is an easy trademark to establish, since the Adobe company doesn’t actually have anything to do with adobes, and the program doesn’t have anything to do with acrobats. But “Adobe Acrobat” really only has one meaning for the public: the software program, rather than circus performers jumping around on mud huts.

But if you had a fish shop whose name was simply “Fish Shop”, there’d be nothing about it to associate it specifically with YOUR fish shop and nobody else’s. And thus, the reason the name “hotels.com” isn’t a viable trademark for a hotels website, despite the convenience of the name on the Internet.

Because of this, what many companies have begun doing is using an actual trademark-worthy name (“Global Galaxy Hotels”, or whatever), but using the generic web address (hotels.com) to redirect to their site.

Joe Gordonsays:

Thank god for the ruling

Thank god for this ruling. Of course there can only be one Hotels.com. This is not why they’ve spent large volumes of money. They have spent the money for one reason…so they could go after anyone and everyone with the hotel or hotels in or as part of their domain with udrp disputes and trademark infringement claims. Anyone who believes otherwise is on something very strong. I am someone who knows. I am the owner of a generic .net and my direct competitor in the same business who owns the corresponding.com which ranks #1 in google throughout all searches related to the industry has hired a lawyer to try to find a way to go after me. Again thank god for the hotels.com ruling. This company now knows they have no trademark case. They have tried to have phony customers call me to see if I would pass myself off as them to no avail and they still persist with even more nefarious schemes as prescibed by their hired guns. Why do they do this you ask? Because millions of dollars of venture capital is on the line if this company can create an online brand out of the generic term. All I want is to do business on the generic domain I rightlfully own. I have a branded corporation as well but the benefits to having both a brand with generics is enormous eg. Campbells Soup owning soups.com. Anyone who thinks that Hotels.com should receive a trademark is not living in the real world as this was nothing but a not so inconsipcuous attempt to eradicate competition and gain market share. Fortunately the courts saw right through this and pulled the curtains closed on them and the rug out from under them.

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