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.


Reader Comments (rss)

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  1.  
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    Osno (profile), Jul 28th, 2009 @ 8:05pm

    I think you forgot to say "thankfully" somewhere at the end. Like we need another guy claiming trademark for anyone writing the word "Hotel" in their hotel.

     

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  2.  
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    Anonymous Coward, Jul 28th, 2009 @ 8:37pm

    MONSTER CABLE SUCKS!
    Sorry Hotels.com

     

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  3.  
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    lux (profile), Jul 28th, 2009 @ 8:38pm

    Unique identifier?

    If they truly use only HOTELS.COM as stated in the linked .PDF, then this does appear to be a troubling ruling. www.hotels.com resolves to static IP address, which by definition is unique identifier - so explain to me again why this can't be used as a trademark?

     

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  4.  
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    Overcast (profile), Jul 28th, 2009 @ 8:39pm

    What's the point? They have the domain - I mean it's not like anyone would put up a site at www.goofycrap.org and claim to be hotels.com?

     

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  5.  
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    Tristin, Jul 28th, 2009 @ 9:07pm

    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.

     

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    Anonymous Coward, Jul 28th, 2009 @ 9:48pm

    Well.... lol

     

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    Scott Owens (profile), Jul 28th, 2009 @ 11:30pm

    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

     

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    Mike V. Sardina, Jul 28th, 2009 @ 11:37pm

    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.

     

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  9.  
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    Tino, Jul 29th, 2009 @ 4:31am

    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?

     

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  10.  
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    Tino, Jul 29th, 2009 @ 4:32am

    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?

     

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    Lance (profile), Jul 29th, 2009 @ 5:03am

    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?

     

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  12.  
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    John Doe, Jul 29th, 2009 @ 5:14am

    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.

     

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    Ilfar, Jul 29th, 2009 @ 7:30am

    Re: Yes, but...

    That's exactly what I thought - Look at the way things seem to happen in the world, then tell me with a straight face you can't imagine anyone ever trying to abuse a trademark like this... :P

     

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  14.  
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    Anonymous Coward, Jul 29th, 2009 @ 7:46am

    wasn't there a recent case about a company using lettuce in their company sign and getting sued because lettuce was trademarked?

     

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    Anonymous Coward, Jul 29th, 2009 @ 7:47am

     

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    res2 (profile), Jul 29th, 2009 @ 8:18am

    Re: Well.... lol

    Think I need to grab that domain name... :)

     

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  17.  
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    ASH, Jul 29th, 2009 @ 11:11am

    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.

     

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  18.  
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    Nasch, Jul 29th, 2009 @ 11:51am

    Re:

    I guess the restaurant in Boulder CO called simply "Food" (at least, that is what the sign above the door says) will not be able to trademark their name. :-)

     

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  19.  
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    Anonymous Coward, Jul 30th, 2009 @ 8:36am

    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.

     

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  20.  
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    Anonymous Coward, Jul 30th, 2009 @ 8:37am

    Re:

    Yes, you have it. Very good explanation.

     

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  21.  
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    Anonymous Coward, Jul 30th, 2009 @ 8:37am

    Re: Re:

    Correct

     

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  22.  
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    Joe Gordon, Feb 25th, 2010 @ 9:26pm

    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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