In In Re Hotels.com, L.P., the Court of Appeals for the Federal Circuit upheld the Trademark Trial and Appeal Board’s decision that HOTELS.COM is generic for online hotel booking services and, therefore, not entitled to any trademark protection whatsoever.
As many of you probably know, generic terms are not trademarks and are not entitled to any trademark protection. For instance, the word “hotel” is generic when it is used in connection with products and services related to hotels. If I wanted to open up a new hotel and name it “Hotel Morris” (and why wouldn’t I?), nobody else in the hotel business could stop me from using the word “hotel” as part of my name. In other words, nobody can claim exclusive rights to the word “hotel” if it is being used to advertise and sell hotel services.
For many years, it has been the policy of the Trademark Office to treat generic terms combined with “.COM” (e.g. “hotels.com”) in the same way it treats plain old generic terms (e.g. “hotel”). The rationale behind this is that the “.COM” only serves to indicate that the product or service preceding the “.COM” is rendered or offered over the Internet. So, when Hotels.com applied to register its trademark HOTELS.COM for essentially online hotel booking services, the Trademark Office refused registration on the basis that HOTELS.COM was generic for such services. This decision was affirmed by the Trademark Trial and Appeal Board and, subsequently, by the Court of Appeals for the Federal Circuit.
I strongly believe that the Trademark Office’s policy of treating generic terms combined with “.COM” in the same manner as generic terms by themselves is wrong and fails to take into account how people think about trademarks and the Internet. Let’s compare the following two scenarios:
Scenario 1. Did you use an online hotel booking service to reserve your hotel room? If yes, which online hotel booking service did you use?
Scenario 2. Did you use Hotels.com to reserve your hotel room? If yes, which Hotels.com did you use?
In Scenario 1, the second question could be answered “Hotels.com,” but it could also be answered “Travelocity,” “Expedia,” “Orbitz,” etc. However, in Scenario 2, the second question makes no sense to the average person. Why? Because unlike the phrase “online hotel booking service,” which clearly doesn’t identify any specific company, average individuals in the United States recognize HOTELS.COM as a brand name and associate HOTELS.COM with a specific provider of online hotel booking services. In fact, such a strange question would likely elicit a response similar to “What do you mean? There’s only one Hotels.com.”
And that’s the key. There is only one Hotels.com, just like there is only one Shoes.com, one Jeans.com, one Printers.com, and one Chairs.com. And, the commercial reality is that there will only ever be one business using the name Hotels.com, Shoes.com, Printers.com. etc. at any given time because a business would only choose to use such a name if it also owned the corresponding domain name, of which there is only one. For example, I would not want to start operating a competing online hotel booking service under the name HOTELS.COM if I didn’t also own the www.hotels.com domain name because I would just cause consumers to visit my competitor rather than me. Nobody would do something so incredibly stupid. The nature of the name itself effectively excludes all others from using it. Hell, these generic terms combined with “.COM” may be the strongest trademarks ever created!
In conclusion, the Trademark Office needs to step into the 21st century when it comes to generic terms combined with “.COM” and stop trying to apply outdated trademark law from 50 years ago without considering the commercial reality of how trademarks, domain names, and e-commerce intersect.