Hotels.com Loses Appeal To TradeMark Hotels.com

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Hotels.com lost its bid to register a trademark on “hotels.com” when the U.S. Court of Appeals for the Federal Circuit ruled the mark was a “too generic term” to be trademarked.

The decision handed down yesterday, upholds the ruling by the Trademark Appeal Board, of March 2008, which denied Hotels.com’s application for a trademark,  also calling it too generic.

The appeallate court in upholding the denial of the trademark, stated in part:

There are a “large number of similar usages of “hotels” with a dot-com suffix, as well as the common meaning and dictionary definition of “hotels” and the standard usage of “.com” to show a commercial internet domain. We conclude that the Board satisfied its evidential burden, by demonstrating that the separate terms “hotel” and “.com” in combination have a meaning identical to the common meaning of the separate components. The Board’s finding that HOTELS.COM is generic was supported by substantial evidence.”

A good ruling in my opinion but still have no understanding of how many generic terms were allowed to be trademarked.

About Michael Berkens

Michael Berkens, Esq. is the founder and Editor-in-Chief of TheDomains.com. Michael is also the co-founder of Worldwide Media Inc. which sold around 70K domain to Godaddy.com in December 2015 and now owns around 8K domain names . Michael was also one of the 5 Judges selected for the the Verisign 30th Anniversary .Com contest.

Comments

  1. owen frager says

    I bet they do well. GetARoom.com is a much better domain for a television campaign then hotels.com. It’s memorable, intriguing, connected to personal memories. In implies action and the infamous “I want that” 800# kind of response.

  2. Steve says

    Thank goodness we are starting to see some common sense in these turbulent times. Trademarking generic terms with a broad pen is ridiculous and should never be allowed. Thanks again for taking the time to keep us all well informed.
    Best Regards.

  3. Andrew Rosener says

    Nothing iritates me more than seeing companies trying to trademark completely generic and commonly used words. You can not have a monopoly on the English Language (nor any language for that matter).

    Good decision.

  4. Tony says

    They were trying to trademark “hotels.com” not “hotels”.

    I can see if you owned the TM for “hotels”, you’d have a legit claim to block/seize any hotels.xyz domains. But, can the same be said of the holder of “hotels.com”?

  5. Mark Fulton says

    I agree with Tony, if they are the legitimate owner of Hotels.com domain name then I believe they be should able to TM the domain name as their brand.

    Then again, the courts observation that their are numerous other .com domain names with “Hotels” as their primary keyword is also valid.

  6. Jon Kimball says

    I think this ruling is potentially very damaging to owners of generic domain names. It strikes me as odd that a business cannot trademark the one thing that is unique to its business. Only one person can own hotels.com, yet they can’t have exclusive rights to the term “hotels.com”? Doesn’t make sense.

    I agree, no one should be able to trademark a generic words like “hotels”, but “hotels.com” is totally different. It’s a uniqie domain, and the owners of that domain should be able to protect it from being used by people who don’t own that domain. Am I missing something?

  7. Alan says

    I’m pretty sure the problem lies with the application here.

    Mortgage.com, RealEstate.com,Real-Estate.com

    All these were given trademarks but all had the application submitted with a disclaimer

    “NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE “real estate/mortgage” or “com” APART FROM THE MARK AS SHOWN

    Essentially they have trademarked the logo and name but not exclusive to the use of the commonly used words.

    Looks like the lawyers for Hotels.com dropped the ball here and tried to overreach.

  8. jp says

    A good decision I think. Perhaps we should lobby the USPTO to stop them from handing out trademarks on Generic terms. This could stop the problem at the source. IF XYZ corp is blocked from getting a trademark on XYZ.com, then it is less likely that corrupt NAF & WIPO will seize the domain from the domain owner that registeted it in good faith. Alot of times WIPO & NAF can just claim it was trademarked. It’s not WIPO or NAF’s responsibility to assess the validity of the trademark, that is already taken care of by USPTO.

  10. jp says

    It used to be easie to TM a domain name, much harder now that the world knows more about .com and it has gotten so common place. Also, I just looked at USPTO.gov for cars.com and found that there is no TM for it. You can see that they did apply, but were never given a registration number, which I believe means it didn’t go through for them either. It looks like WholesaleCars.com got their Logo Trademarked, however the trademark has sinced. The attempted Cars.com registrations are also listed as Dead as well.

  11. FX says

    good decision, i hope it becomes cheaper to cancel other generic Trademarks out there.

  12. MHB says

    Guys

    I think that everything else in life, it depends who hears a particular case on a particular day.

  15. D says

    I think is good decision, otherwise they could UDRP domains like comfortablehotels..com, cheaphotels.com etc

  16. Joe Gordon says

    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.

  17. Fabio says

    If the guy owns the domain, its ownes, what’s the point in registering it?

    I bet they’d try to fuck up californiahotels.com or besthotels.com, and all tghe others *hotes.com – and that would be really unffair. In my opinion somebody owning hotels.com is by itself unfair. There are just so many arguments I could use here, I won’t even start. And that also proves how generalizing is unfair. LOL.

  19. Fabio says

    Oh, I now see another question:

    Let’s say I own californiahotels.com and I market hotels from California (duh)… Can I go after the guys at hotels.com, if the create a subdomain california.hotels.com? We all know its the same thing, in practical matters – except mine is the specific one.

    Makes you wonder, hu?