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:
The Precedential TTAB Opinion: http://des.uspto.gov/Foia/ReterivePdf?flNm=78277681-03-24-2008&system=TTABIS
Sebastian Ohanian contributed to this blog.