Generic Domain Name Can’t Be Trademarked, U.S. Court Rules

Rhett Pardon
WASHINGTON — Sometimes domain names are just too generic to be trademarked.

Witness last week’s outcome of Hotels.com’s bid to register its trademark — a federal appeals court flatly rejected it.

In the ruling that scuttles the notion that simple domains might be intrinsically and financially more beneficial, the U.S. Court of Appeals for the Federal Circuit sided with a U.S. Patent and Trademark Office appeals board, which said that the dot-com after its business name “does not convert the generic term ‘hotels’ into a brand name.”

Hotels.com, which acts as a third party for hotel reservations, submitted to the appeals board 64 declarations from customers, vendors and competitors, each of whom stated that “the term Hotels.com is not the common, generic name of any product service, or field of study.” The company even provided a survey that backed up its claim.

But, in the end, the appeals court sided with the patent office and ruled that it sufficiently denied registration on the grounds that Hotels.com is merely descriptive of hotel reservation services, and that the applicant’s evidence was insufficient to show acquired distinctiveness under Section 2(f) of the Lanham Trademark Act.

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