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Hotels.com Denied Trademark, Too Generic Says Court

A federal appeals court has ruled that the term "Hotels.com" can't be trademarked because "hotels" is too generic.

The hotel information and booking site Hotels.com had argued that even if the word "hotels" is generic, adding a dot-com to it resulted in a term that should be given trademark protection.

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Bad decision Mark Jeftovic  –  Jul 25, 2009 9:26 AM PST

I'm not a lawyer, but I don't see why they couldn't trademark "hotels.com" - which certainly is unique given that there can only be one.

In our trademark for "easyDNS" we had to specifically disclaim any claim to the generic term "dns", but were able to trademark "easy" and "dns" together.

It seems something similar would apply here. Yes, "hotels" may be too generic to trademark, but hotels.com certainly isn't.

It is a very sensible ruling. One Paul Tattersfield  –  Jul 26, 2009 8:57 AM PST

It is a very sensible ruling. One of the fundamentals of Trademark Law is not to give a single entity advantage over all others by allowing descriptive generic terms that do not distinguish the goods and services from all others.

For exactly the same reason ICANN should not be allowing generic top level domains like .hotels. Because if new gTLDs are deemed to have competitive advantage they will in effect be awarding a small number of economically advantaged individuals and corporations private monopolies in perpetuity.

Generic gTLDs like .hotels are an absolute minefield for ICANN. If one of the big players such as Intercontinental, Wyndham or Best Western etc. acquire the IP rights to .hotels (or the company which is awarded .hotels), they have sufficient market presence to use it to brand in all the major cities as each have over 4000 hotels. That’s London.hotels , Paris.hotels, NewYork.hotels once their competitors realize what they have been granted they are not going to be very happy, in much the same way as if their competitors had been granted a Generic Trademark IP rights in hotels.com

"hotels" may not distinugish the entity from Mark Jeftovic  –  Jul 26, 2009 9:27 AM PST

"hotels" may not distinugish the entity from all others, but hotels.com certainly *does* and should be trademarked.

This has nothing to do with .hotels, we're not even talking about that.

If the trademark had been awarded (much Paul Tattersfield  –  Jul 26, 2009 5:01 PM PST

If the trademark had been awarded (much in the same way as ICANN awarding rights for .hotels in the above example), the trademark confers advantage on a single entity and this disadvantages others looking to compete. 

You're assuming that in combination hotels + .com ceases to be generic this is more comparable with
DNS + .com rather than easy + DNS in your example.  Trademarking EasyDNS FastDNS FreeDNS for DNS services is totally different from trying to trademark DNS + .com for DNS services.

If the trademark had been awarded added Paul Tattersfield  –  Jul 27, 2009 12:42 AM PST

EasyDNS FastDNS FreeDNS probably wasn't the best illustrative example, EasyDNS SuperDNS HyperDNS may have been a better illustrative examples of marks with a specific disclaimer to the 'DNS' component.

Uniqueness Daniel R. Tobias  –  Jul 28, 2009 8:42 AM PST

Certainly, "hotels.com" uniquely identifies the particular site that is at that address, just as any other domain address does.  However, no trademark is needed to preserve this uniqueness.  On the other hand, a trademark might let the owner do possibly dubious things, like claiming that similar domain names like "hotels.net" or "hotels.info" or "anything.hotels" or "miamihotels.com", etc., are infringements, thus ending up gaining proprietary rights over something generic as feared.

how to protect hotels.com? ron wickersham  –  Aug 08, 2009 1:10 PM PST

the difficulty of UDRP is that it gives priority to a trademark holder, so how is hotels.com able to avoid being taken away?

note that a trademark is limited to one line of product in one geographical area, so if i have a trademark for "hotel" coffee, or "hotel" stationery brand in some country, then UDRP gives me the domain even though the registrant of hotels.com doesn't infringe on my trademark.

while there are legitimate cases where squatting or other domain use interferes with trademark, UDRP comes up short of protecting both commercial and especially non-commercial uses of domain names where a trademark utilizing a generic word offers bullying by trademark holders to sieze domain names in cases where trademark _law_ does not give them that broad reaching power to "own" a word.

if ICANN goes ahead with broad extensions of TLD's then what protection for .hotels could exist?

UDRP Daniel R. Tobias  –  Aug 08, 2009 3:40 PM PST

It's possible (though sometimes iffy) to successfully defend against a UDRP case on the grounds of using a word in its generic sense even though somebody else has a trademark on it in a different sense.

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