You’ve spent thousands of dollars on the marketing and advertising of your brand, but are you sure you have an enforceable brand name?
Early Internet marketers disseminated misinformation 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:
A generic term will never be a trademark or brand for the product or service being sold.
That message has been passed as law by the U.S. Court of Appeals in the case of Hotels.com, a company that spent thousands in court fees attempting to protect its generic domain name from competitors’ use of the term in SEO. In re Hotels.com, 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 only argument available to business owners who are committed 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 HOTELS.COM is not a trademark? It means that Hotels.com cannot sue other companies who use the term “hotels.com” to trigger ads on Bing™, Google™ or other search engines. Try doing a search for “hotels.com” and see what comes up—the official website, plus Travelocity®, Priceline® and many more.
By definition, a generic term cannot identify source. Be unique to be protected.