Friday, 09 October 2009 18:44


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In July 2009, the Federal Circuit affirmed a Trademark Trial and Appeal Board (TTAB) finding that the mark HOTELS.COM was generic when used in connection with information and reservation services for temporary lodging.
Traditionally, “generic” terms or phrases are defined as being incapable of carrying trademark significance, meaning that they are so highly descriptive of the pertinent goods or services that they are not capable of ever achieving enough distinctiveness to serve as a source indicator. Accordingly, a common test for determining genericness of a service mark involves an analysis of whether the term or phrase at issue is used by the relevant public primarily to refer to the class or “genus” of services. 
However, some believe that marks which coincide with domain names, such as the HOTELS.COM mark, inherently serve as source indicators to some extent – even when the domain name is strongly identified with the subject matter of the associated services. Of course, even if such marks were found to be “descriptive,” rather than generic, such marks would probably be entitled to extremely narrow protection.
Nevertheless, both the TTAB and the Federal Circuit found HOTELS.COM to be generic. In a similar case, LAWYERS.COM was also found to be generic when used in connection with an online interactive database featuring information exchange in the fields of law and legal news.
The Federal Circuit Opinion:
Sebastian Ohanian contributed to this blog.
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Jason LaCosse

As a Registered Patent Attorney, Mr. LaCosse concentrates his practice in Patent and Trademark Prosecution, Intellectual Property Enforcement, and Licensing. He maintains an AV-Preeminent peer rating by Martindale-Hubbell, is Board Certified by the Florida Bar as an expert in Intellectual Property Law, and is licensed to practice in the U.S. District Court for the Southern and Middle Districts of Florida. Mr. LaCosse is an active member of the Dade County Bar Association, serving on the DCBA Membership Committee and the DCBA Intellectual Property Committee. Mr. LaCosse earned his bachelor's degree in Applied Physics with honors from Michigan Tech, his master’s degree in Electrical Engineering from the University of Michigan, and his law degree from the University of Denver.