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HOTELS.COM, HOW GENERIC—TRADEMARK LOST ITS LUGGAGE!
© Cheryl Hodgson 2009 | Posted on October 23, 2009
The costly and belated attempt of Hotels.com to create a protectable trademark and brand from a generic domain name illustrates a point I have been ranting about to internet business owners for several years. A generic term will never be a trademark or brand for the product or service being sold. Before investing thousands of dollars in marketing and advertising solely under a generic or descriptive domain name, consider adopting and registering a term that can be a valuable brand. A strong trademark will distinguish your services and can be used to stake out your turf in the marketplace. Otherwise, you will end up just like HOTELS.COM. It is a nice location on the Internet, but they have no fence to keep out the competition!
Early internet marketers and domain aggregators have spent the last 10 years creating misinformation and leaving many internet businesses with weak or no brand protection. Marketers in their quest to secure easy search rankings, as well as domain resellers seeking to drive up prices, failed to communicate this important message. Now it is not just my pet peeve, it is the law according to the U.S. Court of Appeals. http://brandaideblog.com/wp-content/uploads/2009/11/in-re-hotels.com_.pdf
Despite spending huge amounts in legal fees to convince the court that HOTELS.COM could be a trademark, the efforts to retrieve its lost luggage failed. In re Hotels.com, L.P., 573 F.3d 1300 (Fed. Cir. 2009) affirmed that a generic word can NEVER be trademarked, at least not for the goods or services being sold under that name. The whole point of having trademarks is to identify source. By definition, a generic term cannot identify source. Do not be generic. Be unique. Get protected.
Hotels.com thought that by adding a dot-com to the generic word “hotels”, they could get trademark protection. That is not the case. A word is still generic regardless if it has a dot-com or not. A dot-com merely shows internet commerce. For example, the court referenced the Lawyers.com case. See In re Reed Elsevier Props., 482 F.3d 1376 (Fed. Cir. 2007) (online interactive database featuring information exchange in fields of law, legal news and legal services denied registration of generic mark LAWYERS.COM).
The only argument available to business owners who are wedded to a weak or generic term, is to throw money and legal fees into attempting to prove the term has “acquired distinctiveness” so that the public identifies the term with a particular business or source for goods and services. As was the case here, such efforts after the fact are an uphill battle not easily won. The company failed to persuade the board that its survey showing 76% of 277 consumers thought the domain name was a brand name was sufficient evidence. The board stated that “the survey design did not adequately reflect the difference between a brand name and a domain name.”
So what does this mean now that HOTELS.COM is not a trademark? It means that Hotels.com cannot sue other companies who use the term “hotels.com” to trigger ads on Bing™, Google™ or other search engines. Try doing a search for “hotels.com” and see what comes up—the official website, plus Travelocity®, Priceline® and many more.
What about www.all-hotels.com, www.web-hotels.com and www.my-discount-hotels.com? The TTAB cited these websites to demonstrate a competitive need for others to use “hotels” as part of their own domain names and trademarks.
The holidays are just around the corner…which site will you use to book your hotel stay? Save money and just go with the generic brand—Hotels.com!
Technorati Tags: Branding, brands, copyright registration, generic terms, internet law, loss of rights, Registration, trademark, trademark registration, trademark selection, Trademarks
3 Comments »
November 7th, 2009 at 10:10 am
Very interesting article Sheryl. They went for the big keyword but forgot about uniqueness. The trade-off was big.
Take care
Ricardo
November 19th, 2009 at 1:08 pm
Dear Cheryl: Great and very interesting article!!!! Without doubts a trademark is diferent to a domain name, a trademark can be a domain name but not always a domain name could be a trademark, specially as these cases showed in your article of generic words. A trademark may be eligible for registration, or registrable, if amongst other things it performs the essential trademark function, and has distinctive character. Claudio Albarellos. Argentina.
February 25th, 2010 at 10:19 pm
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.