Hotels.com, L.P.

Trademark Trial and Appeal Board

Sep 11, 2006

No. 76414272 (T.T.A.B. Sep. 11, 2006)

Hearing: Mailed:
January 31, 2006 September 11, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Hotels.com, L.P.
________

Serial No. 76414272
_______

Gary D. Krugman, Kevin G. Smith and Jody H. Drake of
Sughrue Mion PLLC for Hotels.com, L.P.1

Ingrid C. Eulin, Trademark Examining Attorney, Law Office
111 (Craig D. Taylor, Managing Attorney).
_______

Before Walters, Holtzman and Rogers,
Administrative Trademark Judges.

Opinion by Rogers, Administrative Trademark Judge:

Hotels.com, L.P., a limited partnership of Texas,
filed an application on May 30, 2002 to register the
proposed mark set forth below for services identified as
"providing information for others about transportation;
travel agency services, namely, making reservations and
bookings for transportation for others by means of

1 The attorneys from the Sughrue law firm assumed responsibility
for the application following issuance of the examining
attorney's final refusal to register the proposed mark.
This Opinion is Not
Citable as Precedent
of the TTAB
Ser No. 76414272
2
telephone and the global computer network," in Class 39;
and for "providing information for others about hotel
reservations and temporary lodging; travel agency services,
namely, making reservations and bookings for temporary
lodging for others by means of telephone and the global
computer network," in Class 43.

When filed, the application stated applicant's
intention to use the proposed mark in commerce for the
respective services in each class. It is clear from the
record, however, that the proposed mark was already in use
for both classes of services. In fact, when responding to
the examining attorney's initial office action, applicant
asserted that it began using the proposed mark "following
the launch of Applicant's hotels.com website on March 25,
2002." Resp. of March 25, 2003.
The examining attorney's first two office actions
included certain requirements for amendment of the mark
drawing included with the original application. Applicant
has complied with those requirements and the quality of the
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3
drawing is no longer in issue. In contrast, with the third
office action, the examining attorney made final a
requirement advanced in the initial action and continued in
the second action, specifically, a requirement that
applicant include a disclaimer of exclusive rights in the
term "hotels.com."
The examining attorney contends that "hotels.com" is
generic for applicant's Class 43 services. Accordingly,
the examining attorney refused to accept applicant's claim,
made in response to the first and second office actions,
that "hotels.com" has acquired distinctiveness as a mark
and therefore need not be disclaimed. The third office
action also made final the refusal to accept the evidence
of acquired distinctiveness. We note that applicant's
proffer of such evidence was, in fact, premature. Even
though the record is clear that the mark was in use when
the application was filed, the application was, throughout
the referenced exchange of office actions and responses,
based on intent to use. A claim of acquired
distinctiveness usually can only be made in regard to an
application based on use or amended to claim actual use of
the mark in commerce.
The question whether the proposed mark has acquired
distinctiveness is, however, an issue in this appeal. The
Ser No. 76414272
4
examining attorney considered the evidence submitted in
responses to the first and second office actions and
addressed it. Further, three months after the final
refusal, applicant filed an amendment to allege use; and
prior to expiration of the appeal period, applicant filed a
request for reconsideration containing additional arguments
on the issue of acquired distinctiveness. When the
examining attorney subsequently issued an office action on
applicant's request for reconsideration, the action did not
assert any insufficiency in the amendment to allege use.
We take the examining attorney's silence on the matter as
indicating the amendment to allege use was acceptable in
all respects. Therefore, because the application before us
has been acceptably amended to assert use of the mark in
commerce, and because the examining attorney has not
objected to any of the proffered evidence of acquired
distinctiveness, we have considered all such evidence as
properly of record.
Applicant included with the amendment to allege use a
request that the application be divided, because the
examining attorney's assertion of genericness had been
stated to apply only to the Class 43 services. By the
request to divide, applicant sought to have the proposed
mark be freed for registration for its Class 39 services.
Ser No. 76414272
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The request to divide was promptly processed and the
application was divided, with the Class 39 services covered
by the newly created application and the Class 43 services
remaining in the application that is the subject of this
appeal.
The proposed mark eventually was registered for
applicant's Class 39 services and applicant, in the
involved application, has included a claim of ownership of
that registration (Reg. No. 2918738). Applicant has also
included a claim of ownership of Reg. No. 2793744 for the
mark 1 800 USA HOTELS.COM, in standard character or typed
form. This other mark is registered for "Discount travel
agency services, namely, making reservations and bookings
for transportation," in Class 39, as well as for "Discount
travel agency services, namely, making reservations and
booking for temporary lodging," in Class 43. Reg. No.
2918738 is registered on the Principal Register without any
disclaimer or resort to Section 2(f); Reg. No. 2793744 is
registered under Section 2(f) of the Trademark Act, 15
U.S.C. § 1052(f), i.e., on a claim of acquired
distinctiveness of the mark 1 800 USA HOTELS.COM.
Applicant timely filed a notice of appeal from the
examining attorney's refusal to register the proposed mark
for applicant's Class 43 services and, as noted above, also
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filed a request for reconsideration. By its request for
reconsideration, applicant amended the identification of
services to delete the words "hotel reservations and," so
that the resulting identification in Class 43 reads
"providing information for others about temporary lodging;
travel agency services, namely, making reservations and
bookings for temporary lodging for others by means of
telephone and the global computer network." The examining
attorney acknowledged the amendment in the office action
denying the request for reconsideration.
After applicant's request for reconsideration was
denied, this appeal was resumed and was fully briefed.
Applicant requested a hearing and oral arguments were
presented by counsel for applicant and by the examining
attorney.2

Applicant's Objection to Evidence

A preliminary matter requiring attention is
applicant's objection, set forth in its reply brief, to the
evidence attached to the examining attorney's brief. While
applicant acknowledges both that the evidence was presented

2 In a separate matter, we note that applicant filed a notice of
appeal from the refusal of the examining attorney to register
HOTELS.COM, in standard character form, for the services at issue
in this appeal. At the request of applicant, however, that
appeal has been suspended pending disposition of the instant
appeal.
Ser No. 76414272
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by the examining attorney as "dictionary and encyclopedic
evidence," and that the Board can take judicial notice of
standard reference works, applicant contends that this
evidence, besides being untimely, includes many references
derived from online sources or web pages and these are "of
unknown origin, unknown reputation and unknown accuracy."
Reply brief, p. 2, fn 1. We agree that approximately half
of the sources offered by the examining attorney to provide
definitions of various terms bear no indication that they
are available in printed form, or derived from a printed
work. In contrast, 11 of the attachments are merely online
or web presentations from standard printed reference works.
There are four definitions retrieved from the Merriam-
Webster Online Dictionary ("travel agency,"
"accommodation," "reservation" and "hotel"), and three
retrieved from "Bartleby.com" ("accommodation," "hotel" and
".com"), with the Bartleby pages specifically stating that
the source of the definitions is The American Heritage
Dictionary of the English Language, Fourth Edition (2000).
There is also a page retrieved from the Encyclopaedia
Britannica Online, which indicates that its definition of
"hotel" is "from the full 32 volume encyclopedia"; and
there is a page from "AskOxford.com" which features a
definition of "hotel" from the printed Compact Oxford
Ser No. 76414272
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English Dictionary. Finally, there are two pages retrieved
from "Cambridge" dictionaries, with one page featuring a
definition of "hotel" from the Cambridge Dictionary of
American English, while the other page features a
definition of ".com" from the Cambridge Advanced Learner's
Dictionary; and each of these two web pages notes the
source and availability of the printed volumes. We sustain
applicant's objection to the majority of the attachments to
the examining attorney's brief, but have considered those
we have referenced above, because it appears clear that
these web page definitions have their origin in printed
works and are appropriate items of which to take judicial
notice. Cf. In re Total Quality Group Inc., 51 USPQ2d 1474
(TTAB 1999) (The Board will not take judicial notice of
definitions found only in on-line dictionaries and "not
available in a printed format.")(emphasis added).

Other Evidence of Record

Having resolved the question of how to treat the
evidence attached to the examining attorney's brief, we now
turn to a review of what other evidence is of record.
Because the examining attorney has refused registration on
the ground that applicant's proposed mark is generic, the
evidence on which the examining attorney relies consists of
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dictionary and encyclopedia definitions, of both "hotels"
and ".com," as well as of terms set forth in applicant's
identification of services. The examining attorney also
relies on some of applicant's evidence of acquired
distinctiveness and on applicant's specimens, as support
for the contention that "hotels" conveys, to the relevant
public, more than just hotel services and can also mean
hotel reservation or booking services. Finally, the
examining attorney also relies on certain reprints from
office records regarding registrations owned by applicant,
on reprints of web pages from applicant's web site, and on
various other web pages or listings of the results of
searches conducted on the web.
Applicant's contributions to the evidentiary record
primarily consist of evidence offered in support of its
claim that the "hotels.com" portion of the proposed mark,
although it may be descriptive (see brief, p. 5), is not
generic and has acquired distinctiveness sufficient to
allow for registration of the entire mark without the
disclaimer required by the examining attorney. Applicant
contends that "hotels.com" is not generic, that the mark as
a whole is unitary, and that the examining attorney's
evidence is insufficient to establish genericness.
Ser No. 76414272
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Specific consideration of the evidence of genericness
and of acquired distinctiveness follows, in conjunction
with our discussion of each of those issues. We begin,
however, with the question whether applicant's proposed
mark is unitary.

Is the Proposed Mark Unitary?

Applicant's first argument in this appeal is that its
proposed mark is unitary, because its literal
("hotels.com") and design (the bellman) elements create a
single commercial impression and the proposed mark cannot
be divided into separable components. Brief, p. 3, citing
TMEP Section 1213.05(f) and In re Texsun Tire and Battery
Stores, Inc., 229 USPQ 227 (TTAB 1986). The mark in the
Texsun Tire case is set forth below:

The inquiry into whether a proposed mark is unitary is
a factual determination and "requires the Board to
determine ‘how the average purchaser would encounter the
mark under normal marketing of such goods.’” In re
Slokevage, 441 F.3d 957, 78 USPQ2d 1395, 1398 (Fed. Cir.
Ser No. 76414272
11
2006), citing Dena Corp. v. Belvedere Int'l Inc., 950 F.2d
1555, 1561, 21 USPQ2d 1047 (Fed. Cir. 1991) (citations in
Dena omitted in Slokevage). Accordingly, while there are
many reported decisions of the Federal Circuit and the
Board that deal with the question of whether the elements
of a proposed mark are unitary or not, they provide little
aid in resolving the factual question presented by the case
at hand. We do note, however, that the Texsun Tire case on
which applicant relies did not deal directly with a
requirement by an examining attorney that the applicant in
that case disclaim a portion of the composite mark. In
fact, prior to the appeal of a substantive refusal of
registration, applicant had already disclaimed the design
of the tire. Texsun Tire, 229 USPQ at 228. The majority,
dealing with the substantive refusal of registration on the
ground that the mark was primarily geographically
descriptive, found the examining attorney's focus on the
map of Texas alone, notwithstanding the disclaimer of the
tire design, to be in error and found that the proposed
mark was "a unitary composite mark which is unique and
fanciful… the mark involved herein is not merely a map but
a unique combination of parts which may not be fragmented
into its various pieces for purposes of analysis and which,
Ser No. 76414272
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in the distinctive form presented, competitors have no need
to utilize." Id. at 229.
If there is a lesson to be learned from Texsun Tire,
it is that we should focus on whether the composite
proposed for registration by the instant applicant is "a
unique combination of parts," i.e., the focus of the
factual inquiry is not on whether the parts themselves are
unique, but whether the combination is unique and one that
"may not be fragmented." It is only when the elements of
the proposed mark form an inseparable whole that the mark
is to be considered unitary. Slokevage, 78 USPQ2d at 1399.
In the case at hand, applicant argues that the
elements in its proposed mark are unitary because they "are
contiguous and actually touch one another." Brief, p. 3.
The examining attorney acknowledges that factors that have
been considered when determining whether elements in a
composite mark are unitary include "whether lines or other
design features physically connected the elements, the
relevant location of the elements, and the meaning of the
terminology as used in connection with the services," and
that "in some instances, because of the visual presentation
of the design and word(s), the components are considered
unitary and not subject to disclaimer." Brief, p. 3.
Nonetheless, the examining attorney argues that close
Ser No. 76414272
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examination of the mark drawing itself reveals that the
bellman is actually separated from the term "hotels.com"
because "the design element is spatially, slightly forward
of the word portion, as if the bellman slightly stepped
forward from the wording." Id. The examining attorney
also argues that the elements are not merged by any weaving
of the design and wording; that, as used on applicant's
website, the word portion is presented in red and the
design element in black and white, thus distinguishing the
two elements; and that the pictorial and literal elements
have different connotations. Brief, pp. 3-4.
In its reply brief, applicant argues that any visual
separation of the elements that might be attributable to a
portrayal of the composite in multiple colors is
irrelevant, as applicant has not sought to register the
proposed mark with any claim to particular colors. Reply
brief, pp. 2-3. We agree with applicant that, because it
has not sought to register the proposed mark in any
particular colors, if it is registered applicant will be
free to use any colors and will not be restricted to the
colors presently utilized on its website. Further, as the
record makes clear, the proposed mark is often utilized in
advertisements that appear in publications in black and
white, such as in a newspaper. Nonetheless, because the
Ser No. 76414272
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Slokevage and Dena decisions state that we must consider
"how the average purchaser would encounter the mark under
normal marketing," and because representations of the mark
in color would be included in normal marketing that would
be seen by the average consumer, we do not discount the
significance of the differences in color noted by the
examining attorney. We add, however, that this is only one
piece of evidence to be considered in the factual
determination we must make.
The operative identification includes two services,
specifically, "providing information for others about
temporary lodging" and "travel agency services, namely,
making reservations and bookings for temporary lodging for
others by means of telephone and the global computer
network." On the record, we must assume that the former
service is also provided by means of telephone and the
global computer network (i.e., the Internet). There is
nothing to indicate that applicant, for example, only
publishes information about lodging in magazines or
guidebooks. To be clear, the record shows that applicant
utilizes many forms of advertising, including magazines or
other publications, in "the normal marketing of" its
services; and those means of advertising are to be
considered in assessing "how the average purchaser would
Ser No. 76414272
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encounter the [proposed] mark." The fact remains, though,
that the services themselves are provided by telephone or
via the Internet; and that fact is to be considered in the
assessment not of whether the proposed mark is unitary but
whether the "hotels.com" portion is descriptive or generic.
Attachments to applicant's December 19, 2003 response
to the examining attorney's second office action include
numerous advertisements and they almost uniformly show the
composite mark proposed for registration, i.e., with no
separation between the two elements. The record, however,
includes a number of examples of use by applicant of the
elements of its composite mark with a clear separation
between them or as distinct elements of ads. There is, for
example, one reprint of applicant's web page from 2003 that
shows the "hotels.com" and bellman elements on same page
but with clear space between them.
The declaration of Linda Essary, applicant's
Compliance Manager, was submitted with applicant's
September 30, 2004 request for reconsideration. Exhibit 1
to the Essary declaration includes numerous advertisements
and other promotional pieces that would be seen by the
average purchaser of applicant's services. Many of these
show the composite mark proposed for registration. In one,
however, a photo of an advertisement above the entrance to
Ser No. 76414272
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Madison Square Garden, a viewer from street level would
perceive the term "hotels.com" as more dominant, because of
its larger size, and might not be clear as to the nature of
the associated figure. Numerous other ads show the
elements of the composite presented separately, albeit in
the same advertisement; still others show only the
"hotels.com" element. For example, one exhibit appears to
be both sides of a brochure and one side shows not only the
composite mark but also each of the elements used
separately. The Greater Miami & The Beaches Visitor Guide
lists just the "hotels.com" element. An ad in a
publication entitled Nevada Events & Shows, poking fun at
the Elvis Presley impersonator phenomenon, uses the two
elements of the mark separately, fashioning the bellman
with Elvis Presley-like hair adjacent to, but separate from
a tagline reading "Hotels.com. Thank you. Thank you very
much." A reprint of a web page from "frommers.com"
features applicant's composite mark in a link to
applicant's web site, but a reprint of a web page from
"www.bill-me-later.com" includes the "hotels.com" element
in the same stylized script as the involved mark but
without the bellman in its link to applicant's web site.
Exhibit 3 to the Essary declaration consists of
references in wire reports and news articles about
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applicant and its web site. Only one of these shows the
composite mark proposed for registration. Another, from
the June 27, 2004 issue of the Sheboygan (WI) Press,
includes a reprint of a page from applicant's web site, and
that page shows the "hotels.com" designation clearly
separate from the bellman character.
The second declaration submitted with applicant's
request for reconsideration is by Elizabeth Hart, a
paralegal at applicant's counsel's firm. This was used to
introduce the results of Internet searches for archived
pages for "hotel.com" and "hotels.com." Numerous pages
from the latter search show only use of "hotels.com"
without the bellman character.
We find "hotels.com" to be the dominant portion of the
composite mark, when viewed from a distance, or when
printed in smaller size in an advertisement. In either of
these forms of presentation, the bellman figure is less
distinct. We also find that applicant has often utilized
"hotels.com" and the bellman character as separate elements
in its ads. Finally, many consumers exposed to applicant's
services through news articles or publications listing
applicant's website as one of many providing similar
services, will be exposed only to the "hotels.com" element.
Consumers exposed to these uses, when subsequently being
Ser No. 76414272
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exposed to the composite, will perceive the elements of the
composite as presented together but not as inseparable.
Likewise, even consumers who are exposed to the composite
first, but later see ads showing the separate elements
apart, or who are exposed to a listing featuring only
"hotels.com" will come to view the elements as related but
not unitary.
We also consider, as additional evidence that the
proposed mark is not unitary, applicant's pursuit of
protection for the individual elements of the composite.
See Slokevage, 78 USPQ2d at 1400. In Slokevage, the
applicant was seeking registration of trade dress that
combined the words FLASH DARE!, a design element and a
product configuration (see below), and had separately
registered the words on the Principal Register, had
obtained a design patent on the flaps configuration, and
had registered the flap design as a mark on the
Supplemental Register. Notwithstanding that the various
elements proposed for registration as a composite mark were
all contiguous or touching, the Board found applicant's
pursuit of separate registrations for different elements to
be evidence the elements were not unitary, and the Federal
Circuit affirmed that finding on appeal.

Ser No. 76414272
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In the case at hand, the record shows that applicant
has a separate application pending for the term
"hotels.com" and has a separate registration for its
bellman design. Thus, we consider this as additional
evidence of the non-unitary nature of the elements in the
composite mark. We add, however, that, unlike the report
of the Slokevage decision, this case includes a good deal
of evidence regarding marketplace use of the elements of
the composite that is probative of why consumers would
perceive the elements of applicant's mark as related but
not as unitary or inseparable.
On the evidence of record, we conclude that
applicant's proposed mark is not unitary. The mark
consists of two readily distinguishable elements – the term
“hotels.com” and the bellman design. As shown in the
drawing of the mark, the wording appears in a bold solid
font, whereas the bellman is rendered in a slight-appearing
Ser No. 76414272
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line drawing with only his jacket a solid black or other
color. The design of the bellman and the wording touch,
but just barely; and the bellman appears to be walking away
from the words, which, in terms of the overall commercial
impression, implies a separateness rather than a merging of
the wording and the bellman. This visual impression of
separateness is further emphasized for consumers by the
extensive evidence, noted above, that the elements, as
actually used, often appear separately and, when appearing
together, as in the applied-for mark, the wording and
bellman design elements are shown in quite different
colors. Accordingly, the examining attorney may require
disclaimer of the "hotels.com" element if that element is
shown to be either generic or descriptive and without
acquired distinctiveness.

Is "hotels.com" generic?

1. The genus of services and relevant public
When a proposed mark is refused registration as
generic, the examining attorney has the burden of proving
genericness by "clear evidence" thereof. See In re Merrill
Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 4
USPQ2d 1141, 1143 (Fed. Cir. 1987); see also In re Gould
Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110, 1111 (Fed. Cir.
Ser No. 76414272
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1987). The critical issue to determine is whether the
record shows that members of the relevant public primarily
use or understand the term sought to be registered to refer
to the genus of goods or services in question. H. Marvin
Ginn Corp. v. International Ass’n of Fire Chiefs, Inc., 782
F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1986); In re Women's
Publishing Co. Inc., 23 USPQ2d 1876, 1877 (TTAB 1992).
Making this determination “involves a two-step inquiry:
First, what is the genus of goods or services at issue?
Second, is the term sought to be registered ... understood
by the relevant public primarily to refer to that genus of
goods or services?” Ginn, supra, 228 USPQ at 530.
The determination of the genus involved can have an
impact on the subsequent determination of what the relevant
public considers the proposed mark or portion thereof to
mean. Thus, the genus issue may, as in this case, be a
subject of disagreement. See, e.g., In re American
Institute of Certified Public Accountants, 65 USPQ2d 1972,
1981 (TTAB 2003).
Applicant initially argues that the examining attorney
did "not clearly set out" the genus of services and, based
on the office action denying applicant's request for
reconsideration, may have presumed that "hotel services" is
the genus in question. Brief, p. 5. Applicant goes on to
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argue that it does not provide hotel services or any
lodging services. Id. On the other hand, applicant
concedes that its services relate to providing information
about lodging and to making reservations and bookings for
lodging; and concedes that these services "can in many
instances, relate to information about hotels and can
relate to reservations and bookings involving hotels."
Brief, p. 5. In the end, applicant argues that the
relevant class of services is "travel agency services,
specifically, travel agency services rendered over the
telephone and online." Brief, p. 6; see also, reply brief,
p. 3.
In the office's brief, the examining attorney focuses
initially on the identification of services and the
specimen of use as evidence of what is the genus in this
case. Brief, pp. 4-5. However, the examining attorney
then goes on to conclude, "The plain meaning of the wording
used in the recitation shows that hotel information and
hotel reservation/booking services are the identified
classes of services at issue." Brief, p. 5.
In this case, however, as in Accountants, we find the
recitation of services to be an apt specification of the
genus. We do not adopt either the examining attorney's
proposed limitation of the genus set out by the
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identification, i.e., a limitation that would have us read
the identification as if it involved only hotels and not
other forms of lodging; but neither do we adopt the
applicant's suggestion that the genus is "travel agency
services," which is broader than travel agency services
restricted to assisting with booking and reservations for
temporary lodging, and which also leaves out applicant's
information services.
The next question is to determine the relevant class
of purchasers for applicant's services. Because there are
no restrictions in the identification of services as to
channels of trade or classes of consumers, we must assume
that the services are available to all customary consumers
of the services, including those who would need information
on hotels and other forms of temporary lodging, or would
need to book or make reservations for the same, for
business or leisure needs, as an alternative residence
during construction or renovation of a primary residence,
for conferences or special events, or for any other reason.
2. What does hotels.com mean to the relevant public?
During prosecution of the involved application,
applicant deleted the words "hotel reservations" from its
identification of services. Applicant has not, however,
argued that because of the deletion "hotels.com" cannot be
Ser No. 76414272
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perceived as generic, and applicant has conceded that hotel
information services and reservations/booking services for
hotels are encompassed within its identification.3 In
essence, applicant has argued that "hotel(s)" would be seen
as generic for the relevant public for hotel services but
applicant does not provide such services. Accordingly,
applicant reasons, "hotels.com" cannot be considered by the
relevant public to be generic for the identified services.
Applicant aligns its proposed mark with certain ".COM"
(or "dot com") marks that have been found by the Court of
Appeals for the Federal Circuit or the Board to be
descriptive, and distances its proposed mark from other
".COM" marks the Board has found to be generic. Compare In
re Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d 1420 (Fed.
Cir. 2005) (Court reversed the Board's decision finding

3 In the Board's relatively recent decision of In re Reed
Elsevier Properties Inc., 77 USPQ2d 1649 (TTAB 2005), that
applicant argued that the proposed mark LAWYERS.COM could not be
refused as generic because applicant had deleted the reference to
"lawyers" in its identification of services. That applicant also
argued that the identification of its "online interactive
database featuring information exchange" in certain fields did
not include "lawyers" as a field and information on "lawyers"
could not be read to be part and parcel of any of the remaining
fields. Reed, 77 USPQ2d at 1651. In essence, the applicant in
Reed argued that, because the meaning of "lawyers.com" to the
relevant public had to be assessed in light of the identified
services, and because the identification did not use or encompass
the term "lawyers," the proposed mark could not have a generic
meaning for the relevant public. The Board rejected that
argument and applicant in this case has not made a similar
argument.

Ser No. 76414272
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STEELBUILDING.COM to be generic and found it merely
descriptive); In re Oppedahl & Larson LLP, 373 F.3d 1171,
71 USPQ2d 1370 (Fed. Cir. 2004) (Court affirmed Board's
finding that PATENTS.COM was descriptive); and In re
Microsoft Corp., 68 USPQ2d 1195 (TTAB 2003) (Board found
OFFICE.NET to be descriptive); with In re Eddie Z's Blinds
and Drapery, Inc., 74 USPQ2d 1037 (TTAB 2005) (Board found
BLINDSANDDRAPERY.COM generic); In re CyberFinancial.Net
Inc., 65 USPQ2d 1789 (TTAB 2002) (Board found BONDS.COM to
be generic); and In re Martin Container, Inc., 65 USPQ2d
1058 (TTAB 2002) (Board found CONTAINER.COM to be generic).
Applicant, however, has failed to note that in Oppedahl and
Microsoft, the marks were refused only on descriptiveness,
not genericness, grounds.
We must focus on the factual inquiry of whether
"hotels.com" is understood by the relevant public to refer
primarily to the identified services. Evidence of the
public’s understanding of a term may be obtained from any
competent source, including testimony, surveys,
dictionaries, trade journals, newspapers and other
publications. See Merrill Lynch, supra, 4 USPQ2d at 1143
(Fed. Cir. 1987), and In re Northland Aluminum Products,
Inc., 777 F.2d 1556, 227 USPQ 961, 963 (Fed. Cir. 1985).
Ser No. 76414272
26
"Hotel" is defined as meaning "[a]n establishment that
provides lodging and usually meals and other services for
travelers and other paying guests." The American Heritage
Dictionary of the English Language (4th ed. 2000) (as
posted at the Bartleby.com website). Other dictionary
definitions of the term of record are similar. A more
prosaic definition also serves well: "hotel … a building
where you pay to have a room to sleep in." Cambridge
Dictionary of American English.
".Com" is defined as "abbreviation: commercial
organization (in Internet addresses)," The American
Heritage Dictionary of the English Language (4th ed. 2000)
(as posted at the Bartleby.com website). We also take
judicial notice of the following definition of "TLD":
“(Top-Level-Domain) The highest level domain category in
the Internet domain naming system. There are two types: the
generic top-level domains, such as .com, .org, and .net….”
McGraw Hill Computer Desktop Encyclopedia 977 (9th ed.
2001) (emphasis added).
The examining attorney also relies on reprints of the
results of three Internet searches. One, conducted on the
NexTag website, includes links to "HotelSale.com,"
"HotelClub.com," "OnlineHotels.com" and under "Additional
Resources" are the full web addresses for
Ser No. 76414272
27
www.hotellocators.com and www.TheDiscountHotel.com. The
second search, conducted on www.lodging.net, includes links
to "hotels.com" (which we presume to be applicant),
"www.choicehotels.com," "www.discounthotels.cc,"
"www.hotellocators.com," and "a1-discount-hotels.com." And
the third search, conducted on Google, retrieved links to
"www.hotels.net" (under the heading "Hotel Reservations"),
"www.hotellinks.com" (under the heading "Hotels Search
Engine") and another listing of "www.choicehotels.com."
See Office action of May 3, 2005 denying applicant's
request for reconsideration (bold emphasis added).
The examining attorney also has noted the manner of
use of the term "hotel(s)" on applicant's website,
specifically noting that applicant uses the term "hotels"
as the designation for a tab that will access lodging
information;4 that applicant uses the designations "find a
hotel," "hotel + air = save," "hotel + air + car = save,"
"hotels by amenities," and "hotels near an address" as
other tabs on the web page. Brief, pp. 4-5. At the top of
the web page are also the proposed mark and the designation
"Welcome to hotels.com." Attachment to May 3, 2005 office
action denying request for reconsideration. Also

4 There is also a tab for accessing information on "suites,
condos, bed & breakfast."
Ser No. 76414272
28
significant, in the examining attorney's view, are
applicant's reprint from its November 1999 website,
proclaiming the site to be the "#1 hotel finder," and a
question posed in a survey that web site visitors are asked
to complete, which asks, survey respondents to "Please list
any travel or hotel sites other than hotels.com, which you
frequent." See, respectively, exhibit D to the declaration
of Elizabeth Hart and exhibit 4 to the declaration of Linda
Essary.
The examining attorney argues that this evidence
establishes that the relevant public will not only perceive
"hotels" as generic for a business providing hotel
services, but also as generic for a hotel finder or hotel
reservations site, i.e., for a provider of the services at
issue in this case. Given that "hotels" is generic for the
involved services, the examining attorney concludes that
the addition of ".com," to form the compound "hotels.com"
is likewise generic, because the ".com" portion is equally
generic and merely designates a commercial enterprise doing
business on the Internet. In essence, the examining
attorney is arguing that the relevant public will, when
considering the term "hotels.com" think of it as an answer
to the question "what am I?" (a hotel information and
reservations site on the Internet) rather than as an answer
Ser No. 76414272
29
to the question "who am I?" (a particular source of hotel
information and hotel booking/reservations services).5 In
this regard the examining attorney relies on In re Gould
Paper Corp., supra, for the proposition that the compound
term created when two terms are united may be just as
generic as the individual terms, if the joined terms retain
their separate meanings. Brief, p. 5.
Applicant, in its March 25, 2003 response to an office
action, argued that it owns a domain name for "hotels.com"
(in addition to "hotel.com"), and "[b]ecause no two
entities can register the same domain name, each individual
domain name, when considered in its entirety, is unique."
The Board has rejected this argument, however, because it
is possible that numerous entities could use a term such as
"hotels.com" or "container.com," by adding a distinguishing
prefix. See Martin Container, supra, 65 USPQ2d at 1061.
Applicant also argues that this case is akin to the
Steelbuilding.com case, supra, in that the addition of the
TLD ".com" to "hotels" expands the meaning of hotels, and

5 As applicant observed in its December 19, 2003 response to an
office action, "generic designations answer the question 'What am
I?'." See also, 2 McCarthy on Trademarks and Unfair Competition
§ 12:1 (4th ed. database updated June 2006) ("A mark answers the
buyer's questions 'Who are you? Where do you come from?' 'Who
vouches for you?' But the name of the product answers the
question 'What are you?'").

Ser No. 76414272
30
does not merely form a compound that conveys the meanings
of the separate terms. In support of this argument,
applicant notes that the applicant in Steelbuilding.com was
observed by the Federal Circuit to be using its mark for
more than just steel buildings and was using it for a
service that allowed web site visitors to design or build
their own steel buildings and then calculate the
appropriate price before ordering. Reply brief, p. 4. In
this case, applicant asserts, its "services go beyond
simply providing information about and assisting customers
with reservations and bookings of hotel rooms. Applicant's
information and travel agency services also relate to other
types of non-hotel lodgings, including condos, vacation
homes, bed and breakfasts, spas, etc." Id. at pp. 4-5.
Applicant's argument, however, is misplaced. In essence,
applicant is arguing that "hotels.com" cannot be generic
for services that provide information on, or facilitate
booking of reservations for, a wider array of lodging than
hotels. However, if the term is generic for that aspect of
applicant's services that deals with hotels, then it does
not matter that it arguably might not be generic for
services that deal with condos, spas or other types of
lodging. See In re Analog Devices, Inc., 6 USPQ2d 1808
(TTAB 1988), aff'd in a decision marked not citable as
Ser No. 76414272
31
precedent, 871 F.2d 1097, 10 USPQ2d 1879 (Fed. Cir. 1989);
see also Eddie Z's, supra, 74 USPQ2d at 1042 ("So long as
BLINDSANDDRAPERY.COM is generic for one of the recited
services, it must be refused registration. It need not be
shown to be generic for each of the recited services.").
In addition, while in the Steelbuilding.com case
"steelbuilding" could be viewed as referring to either a
building of steel or the designing and building of a steel
building, there is no such dual meaning that can be applied
to the term "hotels.com."
Reference to the decision of In re Seats, Inc., 757
F.2d 274, 225 USPQ 364 (Fed. Cir. 1985), is also helpful in
assessing the case at hand. The Seats case involved an
application to register SEATS as a mark for "ticket
reservation and issuing services for various events by
means of a computer," and the Federal Circuit stated: "The
term 'seats' may be generic in relation to chairs or
couches or bleachers. It is clearly not generic to
reservation services. Contrary to the Board's statements,
Seats is not selling seats, as would for example a
furniture merchant, but is selling a reservation service…."
Id. at 367-68. Just as Seats, Inc. was not selling seats,
applicant here is not selling hotels, or even providing
hotel services, but it is there that the similarity with
Ser No. 76414272
32
the Seats case ends. Though the Federal Circuit noted the
Board's concern with "a need of others to use SEATS in
describing the present services," there is no indication in
the Seats decision that the Board actually had before it
evidence of use of the term by other purveyors of ticket
reservation and issuance services. In contrast, the record
in this case evidences use of "hotel.com" and "hotels.com"
as part of the domain names of third-party web sites; and
those web sites appear to provide information to
prospective users of hotels that is the same as or very
similar to that provided by applicant's web site. In
short, this case does not involve a perceived need for
others to use a term, but involves a demonstrated use of
the term by others. The relevant public will, therefore,
perceive use of "hotels.com" as indicating a web site
focused on hotels and, specifically, providing information
about hotels and the possibility of reserving a hotel room.
We find that "hotels.com" is a generic term and the
requirement that it be disclaimed is affirmed. Because we
find the term generic, evidence of de facto secondary
meaning, or of an association of the generic term with
applicant cannot change the result and make the term
registrable. See In re Northland Aluminum Prods., Inc.,
777 F.2d 1556, 227 USPQ 961, 964 (Fed. Cir. 1985).
Ser No. 76414272
33

If not generic has "hotels.com" acquired distinctiveness?
Applicant has requested, in its brief and at oral
argument, that the Board consider and rule on its
alternative claim of acquired distinctiveness, even in the
event "hotels.com" is found to be generic. We agree that
it is appropriate to do so. See Analog Devices, supra. If
it is ultimately determined that our decision herein is
incorrect and that "hotels.com" is not generic for the
identified services, we would at least consider it to be a
highly descriptive term requiring significant evidence of
acquired distinctiveness. Yamaha International Corp. v.
Hoshino Gakki Co., 840 F.2d 1571, 6 USPQ2d 1001, 1008 (Fed.
Cir. 1988) (The kind and amount of evidence of acquired
distinctiveness required to secure a registration will
necessarily vary with the subject matter for which
registration is sought). In this case, applicant has
provided significant evidence of acquired distinctiveness.
With its response to the second office action,
applicant included a declaration from Gregory S. Porter,
applicant's general counsel and secretary. Mr. Porter
stated that, as of the December 18, 2003 date of his
declaration, applicant was averaging 156,000 visitors a day
at its website; that approximately 2,000 other web sites
Ser No. 76414272
34
included links to applicant's site; that in 2002 alone,
approximately 30 million dollars were spent on advertising
on national, local, network and cable television
advertising, as well as on in-flight ads screened on
airliners; that approximately one million dollars had been
spent on print ads in travel-related publications, in-
flight magazines and in publications of general
circulation, such as The New Yorker; that approximately 29
million dollars had been spent on on-line ads; and that
applicant has displayed its proposed mark on billboards at
major U.S. airports, train stations and sports venues. Mr.
Porter also submitted with his declaration the declarations
of 64 individuals familiar with applicant's proposed mark
and services.
To support its request for reconsideration of the
final refusal of registration, applicant included the
previously mentioned declaration of Linda Essary,
applicant's compliance manager, dated August 3, 2004.
Attached to this declaration, as already discussed, were
numerous advertisements. Ms. Essary also attested to
applicant's revenue of 945 million dollars in 2002, 1.32
billion dollars in 2003, and estimated that applicant's
revenue for 2004 would be 1.58 billion dollars. In regard
to cumulative amounts spent on advertising, Ms. Essary
Ser No. 76414272
35
testified to amounts far in excess of what Mr. Porter had
reported less than a year earlier. Finally, Ms. Essary
reported that the number of visitors to applicant's web
site had increased to approximately 475,000 per day.6
This evidence would not render a generic term
registrable, see Northland Aluminum, supra, but it would be
sufficient to allow for registration of even a highly
descriptive term.
Decision: The examining attorney's requirement that
applicant provide a disclaimer of "hotels.com," because
applicant's composite mark is not unitary and the term is
generic, is affirmed. The refusal of registration in the
absence of a disclaimer will be set aside and the mark
published for opposition if applicant, no later than 30
days from the mailing date hereof, submits an appropriate
disclaimer. See Trademark Rule 2.142(g).
In the event the term "hotels.com" is ultimately held
not generic, the examining attorney's refusal to accept the
evidence of acquired distinctiveness is reversed.

6 We also note that applicant relies on its claim of use of its
mark since 1997, but that claim is to use of the mark "in another
form," specifically, as "hotel.com." While we agree that
"hotel.com" is so close to "hotels.com" that use of the former
would be considered probative evidence of applicant's claim that
the latter has become distinctive, we need not rely on this to
find acquired distinctiveness in "hotels.com." The evidence
discussed above is sufficient.