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At Last We Know: 'Hotel' Is Generic
Attention all ye who think the legal system has run amok: It took six years, two appeals and who-knows-how-many lawyers to arrive at the legal conclusion that the word "hotel" is generic. In fact, the word is "a prima facie case of genericness," said the Court of Appeals for the Federal Circuit. That is an appeal court judge's way of saying that the answer was obvious from the get-go.
The question arose in the context of the application of Hotels.com to register its name as a service mark. The trademark examining attorney refused the registration for the reason that the proposed mark is generic and therefore ineligible for protection. Hotels.com appealed to the Trademark Trial and Appeal Board. In March 2008, it issued a decision affirming the refusal of the registration, likewise concluding that the term was generic. Hotels.com then appealed to the Federal Circuit, which issued its decision, In Re Hotels.com, this week.
In its decision, the Federal Circuit summarized the TTAB's analysis. The TTAB reviewed dictionary definitions, Web sites and other hotel-related domain names to conclude, not surprisingly, that hotel is a generic word used to refer to "temporary lodging."
On this much, great legal minds can agree. But Hotels.com's argument was that the word hotel somehow lost its generic nature when it became attached to the ".com" suffix. At that point, it contended, it became identified with a particular company that served as an information source and travel agency. The Federal Circuit didn't buy it. "The generic term 'hotels' did not lose its generic character by placement in the domain name Hotels.com," the court said.
At The TTABlog, John L. Welch points to an interesting subsidiary issue in the case. At the TTAB, Hotels.com submitted a survey that polled consumers on whether they considered Hotels.com to be a brand name or a generic name. Seventy-six percent said they considered it a brand name. Welch explains how the TTAB handled this:
The TTAB was "skeptical" of the survey, reasoning that "consumers may automatically equate a domain name with a brand name." It concluded that the survey questions "radically skew[ed] the results of the survey in applicant's favor" and "did not adequately reflect the difference between a brand name and a domain name."
The Federal Circuit found no error in the TTAB's decision to disregard this survey and decide in favor of the common usage of the word hotel. So all that lawyering over a generic word led to a predictable result. But even if the case had been decided in favor of Hotels.com, what would the company have gained? Welch wonders. "As a practical matter," he asks, "what would a service mark registration give the Applicant that ownership of the domain name does not?"A free night at a hotel in Vegas, perhaps?
Posted by Robert J. Ambrogi on July 27, 2009 at 12:13 PM | Permalink
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