Thursday, August 6, 2009

Hotels + .com is still generic sought to register its service mark HOTELS.COM for the services of "providing information for others about temporary lodging; travel agency services, namely, making reservations and bookings for temporary lodging for others by means of a telephone and the global computer network." The Trademark Trial and Appeal Board upheld the Examiner's reject and found it to be generic for those services. argued on appeal that HOTELS.COM is not generic because the website does not provide lodging, and thus is not synonymous with the word "hotel" and because offered survey evidence showing its mark was widely associated with applicant, and not viewed as a generic term.

The Federal Circuit explained the law:

Whether a particular term is generic, and therefore cannot be a trademark or service mark, is a question of fact. In re Reed Elsevier Props., Inc., 482 F.3d 1376, 1378 (Fed. Cir. 2007). The Patent and Trademark Office (PTO) bears the burden of establishing that a proposed mark is generic, In re Merrill Lynch, Pierce, Fenner, & Smith, Inc., 828 F.2d 1567, 1571 (Fed. Cir. 1987), and must demonstrate generic status by clear evidence. See Trademark Manual of Examining Procedure 1209.01(c) (i) (4th ed. 2005) (“The examining attorney has the burden of proving that a term is generic by clear evidence.”); 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition §12:12 (4th ed. 2008) (“As Judge Posner remarked [in Ty Inc. v. Softbelly’s Inc., 353 F.3d 528, 531 (7th Cir. 2003)]: ‘To determine that a trademark is generic and thus pitch it into the public domain is a fateful step.’”).
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A generic term cannot be registered as a trademark, for generic terms by definition are incapable of indicating source. Merrill Lynch, 828 F.2d at 1569; see H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 989-90 (Fed. Cir. 1986) (a generic term is the common name for the genus of goods or services being sold). However, a term that is descriptive, but not generic, may acquire distinctiveness and serve as a trademark. “Whether a term is entitled to trademark status turns on how the mark is understood by the purchasing public.” In re Montrachet S.A., 878 F.2d 375, 376 (Fed. Cir. 1989). In the generic-descriptive-suggestive-arbitrary-fanciful continuum of words and their usage as marks of trade, there is no fixed boundary separating the categories; each word must be considered according to its circumstances. See In re K-T Zoe Furniture, Inc., 16 F.3d 390, 393 (Fed. Cir. 1994) (“[D]escriptive terms describe a thing, while generic terms name the thing. . . . there is only a fine line between describing and naming.” (quoting 1 McCarthy, §12.05[1] (3d ed. 1992))).

The Court agreed with the lower tribunals and found that the word "hotels" did not lose its genericness simply by being combined with ".com"

Rejection affirmed.

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