Sunday, October 3, 2010

How Generic-Trademark Lost Its Luggage! by Cheryl L. Hodgson, J.D.

The costly and belated attempt of to create a protectible trademark and brand from a generic domain name illustrates a point I have been ranting about to internet business owners for several years. A generic term will never be a trademark or brand for the product or service being sold. Before investing thousands of dollars in marketing and advertising solely under a generic or descriptive domain name, consider adopting and registering a term that can be a valuable brand. A strong trademark will distinguish your services and can be used to stake out your turf in the marketplace.

Early internet marketers and domain aggregators have spent the last 10 years creating misinformation and leaving many internet businesses with weak or no brand protection. Marketers in their quest to secure easy search rankings, as well as domain resellers seeking to drive up prices, failed to communicate this important message. Now it is not just my pet peeve, it is the law according to the U.S. Court of Appeals.

Despite spending huge amounts in legal fees to convince the court that HOTELS.COM could be a trademark, the efforts to retrieve its lost luggage failed. In re, L.P., 573 F.3d 1300 (Fed. Cir. 2009) affirmed that a generic word can NEVER be trademarked, at least not for the goods or services being sold under that name. The whole point of having trademarks is to identify source. By definition, a generic term cannot identify source. Do not be generic. Be unique. Get protected. thought that by adding a dot-com to the generic word "hotels", they could get trademark protection. That is not the case. A word is still generic regardless if it has a dot-com or not. A dot-com merely shows internet commerce.

The only argument available to business owners who are wedded to a weak or generic term, is to throw money and legal fees into attempting to prove the term has "acquired distinctiveness" so that the public identifies the term with a particular business or source for goods and services. As was the case here, such efforts after the fact are an uphill battle not easily won. The company failed to persuade the board that its survey showing 76% of 277 consumers thought the domain name was a brand name was sufficient evidence. The board stated that "the survey design did not adequately reflect the difference between a brand name and a domain name."

So what does this mean now that it is not a trademark? It means that they cannot sue other companies who use the term "" to trigger ads on Bing(TM), Google(TM) or other search engines. Try doing a search for "" and see what comes up-the official website, plus Travelocity®, Priceline® and many more.

The TTAB cited other websites to demonstrate a competitive need for others to use "hotels" as part of their own domain names and trademarks.

Copyright 2008 Hodgson Law Group - Cheryl L. Hodgson, J.D.
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