Hotels.com, L.P.

Trademark Trial and Appeal Board

Mar 24, 2008

No. 78277681 (T.T.A.B. Mar. 24, 2008)

Oral Hearing: October 18, 2007 Mailed: March 24, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Hotels.com, L.P.
________

Serial No. 78277681
_______

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

Tarah Hardy Ludlow, Trademark Examining Attorney, Law Office 110
(Chris A. F. Pedersen, Managing Attorney).
_______

Before Walters, Holtzman and Rogers, Administrative Trademark
Judges.

Opinion by Holtzman, Administrative Trademark Judge:

Applicant, Hotels.com, L.P., filed an application to
register the mark HOTELS.COM (in typed form) on the Principal
Register for services ultimately identified as:1

1 Application Serial No. 78277681; filed July 23, 2003; alleging a date
of first use and first use in commerce on March 25, 2002. Applicant
amended the application on August 4, 2004 to allege a date of first
use anywhere and in commerce in a different form (HOTEL.COM) in 1997.
The application includes a claim of ownership of Registration Nos.
2918738 and 2793744. Registration No. 2918738 is for the mark
HOTELS.COM (and design) for "providing information for others about
transportation; travel agency services, namely, making reservations
and bookings for transportation for others by means of telephone and
the global computer network" in Class 39. This mark is registered on
the Principal Register without a disclaimer or a Section 2(f) claim.
Registration No. 2793744 is for the mark 1 800 USA HOTELS.COM (in
THIS OPINION IS A
PRECEDENT OF THE TTAB
Serial No. 78277681
2
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, in Class 43.

The trademark examining attorney refused registration under
Section 2(e)(1) of the Trademark Act on the ground that the mark
is merely descriptive of the services, that applicant's evidence
of acquired distinctiveness under Section 2(f) of the Act is
insufficient, and that the mark is generic and incapable of
registration under Section 2(f).2 Applicant has appealed from
the refusal.
Prior Board decision

At the outset, we note that the issues in this case were
the subject of a prior Board proceeding in related application
Serial No. 76414272. That case involved the same applicant, the
same term, HOTELS.COM, and the same services as those herein.

typed form) for "discount travel agency services, namely, making
reservations and bookings for transportation" in Class 39; and
"discount travel agency services, namely, making reservations and
booking for temporary lodging" in Class 43. This mark is registered
on the Principal Register under Section 2(f) of the Act.

2 The application also originally included services in Class 39,
"providing information for others about transportation; travel agency
services, namely, making reservations and bookings for transportation
for others by means of telephone and the global computer network." At
applicant's request, and because the refusal on the basis of
genericness only applied to Class 43, Class 39 was divided out of this
application. That application subsequently issued into Registration
No. 3015723 on the Principal Register with a claim of acquired
distinctiveness under Section 2(f).
Serial No. 78277681
3
Proceedings in the present appeal were suspended on July
26, 2005 at applicant's request pending the outcome of the
earlier case.
In that case, applicant sought to register the composite
mark shown below on the Principal Register for the same services
in Class 43.3

In a decision issued September 11, 2006 ("HOTELS.COM I")
(reconsideration denied, October 24, 2006, "HOTELS.COM I
Recon."), the Board affirmed the examining attorney's
requirement for a disclaimer of HOTELS.COM under Section 6(a) of
the Trademark Act finding that the composite mark was not
unitary and that the term HOTELS.COM was generic. However, the
Board alternatively held that if the term was ultimately found
not to be generic, applicant's evidence was sufficient to
support a claim of acquired distinctiveness under Section 2(f),
and the Board accordingly reversed the examining attorney's
refusal to accept this evidence. Copies of the decisions are
attached.

3 As in the present application, the earlier application also initially
included Class 39. That class was divided out of the application and
the application ultimately issued into Registration No. 2918738 under
Section 2(f) on the Principal Register.
Serial No. 78277681
4
Applicant did not appeal the Board's decision in that case.
Instead, as permitted by the Board, applicant submitted the
required disclaimer of HOTELS.COM, and the decision was
accordingly set aside. The application subsequently issued as
Registration No. 3337609 on the Principal Register with a
disclaimer of HOTELS.COM.4
In view of the adverse decision in the prior case, and
during suspension of the present appeal, applicant commissioned
a survey to determine the significance to the public of the term
HOTELS.COM. After the survey was completed, applicant requested
remand of the application to the examining attorney for
reconsideration of the refusal in light of this new evidence.
When the examining attorney rejected the survey evidence as
unpersuasive, the appeal in this case was resumed. Briefs were
then filed in this case and an oral hearing was held.
Res Judicata
The examining attorney argues in her brief that in view of
the prior Board proceeding involving the same applicant and, as
applicant admits, the same issues, the claim presented in this
appeal, i.e., that HOTELS.COM is not generic and may be
registered on a showing of acquired distinctiveness, is barred
by res judicata. We note that the two applications were handled

4 It appears that the registration has mistakenly issued with a Section
2(f) claim.
Serial No. 78277681
5
by different examining attorneys, but the evidence of
genericness, if not the same, is essentially of the same type
and substance. Also, apart from the newly submitted survey
evidence, applicant's evidence in rebuttal to the examining
attorney's prima facie case5 and in support of its claim of
acquired distinctiveness is essentially the same.
The examining attorney contends that all questions of fact
and law have been determined and that no conditions have changed
since the previous ruling. Applicant argues that the res
judicata argument is untimely, having been raised for the first
time in the examining attorney's brief when, as applicant points
out, it could have been raised at the time of the examining
attorney's denial of applicant's (second) request for
reconsideration.
Apart from the question of whether the res judicata
argument was timely raised by the examining attorney, we find
that the principles of the doctrine do not apply in this case.
It is generally held that an applicant is not precluded by an
adverse judicial determination of its right to registration in
an ex parte proceeding from seeking registration in a second
application if the applicant can show that facts or
circumstances have changed since the rendering of the adverse

5 Notwithstanding the prior decision, applicant maintains in the
present appeal that the examining attorney has not met her initial
burden of showing that the mark is generic.
Serial No. 78277681
6
final decision in the first application. See, for example, In
re Honeywell Inc., 8 USPQ2d 1600 (TTAB 1988); and In re Oscar
Meyer & Co., Inc., 171 USPQ 571 (TTAB 1971). See also In re
Bose Corp., 476 F.3d 1331, 81 USPQ2d 1748 (Fed. Cir. 2007)
citing Mayer/Berkshire Corp. v. Berkshire Fashions, Inc., 424
F.3d 1229, 76 USPQ2d 1310, 1314 (Fed. Cir. 2005) ("We have
warned that particular 'caution is warranted in the application
of preclusion by the PTO, for the purposes of administrative
trademark procedures include protecting both the consumer public
and the purveyors.'").
Under the circumstances, and in an exercise of caution, we
find that the survey evidence constitutes a change in facts
sufficient to avoid application of the doctrine of res judicata
and to justify re-examining applicant's claim that the term
HOTELS.COM is not generic. See, e.g., In re Johanna Farms Inc.,
8 USPQ2d 1408, 1411 (TTAB 1988) (prior Board decision finding LA
YOGURT for yogurt incapable of distinguishing source did not
preclude registration of LA YOGURT under the doctrine of stare
decisis;6 application of the doctrine "would be inappropriate in
view of the prima facie showing by applicant of changed facts
and/or circumstances" based on newly submitted evidence of
consumer letters and a survey dealing with purchaser perception

6 In the context of this ex parte proceeding, we consider a res
judicata argument to be equivalent to a stare decisis argument.
Serial No. 78277681
7
of LA YOGURT). The probative value of the survey evidence in
this case will be weighed along with all the other evidence of
record.
We turn then to a consideration of the present appeal. To
the extent the evidence is the same in this case as it was in
the prior case, we follow this panel's reasoning and findings as
to that evidence, and where applicable, we will cite to the
decisions as Hotels.com I or Hotels.com I Recon., as
appropriate. We will make separate findings as to the evidence
that differs. Our ultimate determination, however, will be
based on the record before us as a whole.
Procedural Matter
The examining attorney attached a number of dictionary
entries from online sources to her appeal brief and requested
that the Board take judicial notice of this evidence. (Brief at
8.) Applicant has objected to this evidence as untimely.
The Board may take judicial notice of dictionaries,
including online dictionaries, which exist in printed format.
See In re CyberFinancial.Net Inc., 65 USPQ2d 1789, 1791 n.3
(TTAB 2002). See also University of Notre Dame du Lac v. J.C.
Gourmet Food Imports Co., 213 USPQ 594 (TTAB 1982), aff'd, 703
F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983). From our review of
the attachments, only one of the resources clearly meets that
requirement, namely The American Heritage Dictionary of the
Serial No. 78277681
8
English Language (Fourth Edition, 2000), with entries for
"hotel" and ".com," retrieved from the bartleby.com website. We
take judicial notice of this resource. As to the remaining
entries, applicant's objection is well taken and such evidence
has not been considered.
Issue on appeal
Applicant states in its brief that it does not dispute the
descriptiveness refusal, but believes that the record supports
its position that the mark has acquired distinctiveness under
Section 2(f) of the Act. (Brief at 1, footnote 1; Reply Brief
at 2.) While maintaining that the mark is generic and that no
amount of 2(f) evidence can rescue it, as a result of the prior
decision the examining attorney, in her brief, has essentially
withdrawn the refusal to accept applicant's evidence of acquired
distinctiveness if it is ultimately determined that the mark is
not generic. (Brief at 6.) Thus, the sole issue on appeal is
whether the mark is generic.
Genericness
The test for determining whether a mark is generic involves
a two-step inquiry. First, what is the genus (category or
class) 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 (category or class) of goods or
services? See In re Reed Elsevier Properties Inc., 482 F.3d
Serial No. 78277681
9
1376, 82 USPQ2d 1378, 1380 (Fed. Cir. 2007) (quoting H. Marvin
Ginn Corporation v. International Association of Fire Chiefs,
Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1986)).
The Office has the burden of proving genericness by "clear
evidence" of the public's understanding thereof. In re Merrill
Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 4 USPQ2d
1141, 1143 (Fed. Cir. 1987).
1. The genus of applicant's services and
the relevant public for the services

As determined in the prior decision, and as set forth in
applicant's brief, the genus of services is the wording used in
the recitation, "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."
Applicant's Brief at 9; Hotels.com I at 22-23.
The Board found in the prior case, and there is no dispute
here, that the relevant public for applicant's services consists
of "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
Serial No. 78277681
10
conferences or special events, or for any other reason."
Hotels.com I at 23.
2. The meaning of HOTELS.COM to the relevant public
Evidence of the relevant public's understanding of a term
may be obtained from any competent source including consumer
surveys, dictionary definitions, newspapers and other
publications. See Reed Elsevier Properties Inc., supra at 1380;
and In re Northland Aluminum Products, Inc., 777 F.2d 1556, 227
USPQ 961, 963 (Fed. Cir. 1985). We have considered all the
evidence of record bearing on purchaser perception of
HOTELS.COM, including the evidence applicant has submitted in
support of its claim of acquired distinctiveness. See In re
Recorded Books Inc., 42 USPQ2d 1275 (TTAB 1997); and In re The
Paint Products Co., 8 USPQ2d 1863 (TTAB 1988).
The examining attorney has submitted listings from The
American Heritage Dictionary of the English Language (Third
Edition 1992 and Fourth edition 2000) defining "hotel" as "An
establishment that provides lodging and usually meals and other
services for travelers and other paying guests." (Emphasis
added.) The genus of applicant's services involves information
about temporary lodging and making reservations for temporary
lodging. There is no question, and moreover the evidence
submitted by the examining attorney shows, that "temporary
lodging" is the equivalent of or includes "hotels." See, for
Serial No. 78277681
11
example, the website printouts from www.wa.gov ("Hotels and
Lodging ... National Industry at a Glance..."), stating that
"Hotels and other lodging are homes away from home for business
travelers and vacationers, offering both temporary lodging and
relief from housekeeping chores back home ..."; and
www.austin.about.com, referring to "Austin Hotels, B&Bs, Resorts
and Other Temporary Lodging."
Also of record are printouts of various pages from
applicant's website, www.hotels.com, and advertisements
promoting both applicant's website and the services available on
that website. The website's home page includes a tab for
linking to "Hotels," to search for lodging information and/or to
book a reservation, with additional tabs to search for hotel
information "by city" or "by amenity" or "by address."
Applicant's print advertisements directing the public to its
website variously state: "Book online at www.hotels.com";
"hotels.com enables you to quickly and efficiently compare
accommodations by: price, quality, Location...Amenities,
Availability..."; and "Use this coupon and save on your next
hotel reservation with hotels.com." The examining attorney also
points to one of the questions asked in an online market survey
that visitors to applicant's website were asked to complete:
"Please list any travel or hotel sites other than hotels.com,
which you frequent."
Serial No. 78277681
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It is clear from applicant's website and other promotional
materials that "hotels" are the focus, or a key focus, of the
information about temporary lodging and reservations for
temporary lodging that applicant provides on its website.
Because the term HOTELS names a key aspect of applicant's
services, i.e., that aspect of applicant's information services
and reservation services that deal with hotels, the term is
generic, at least for those aspects of applicant's services.
The term HOTELS.COM is no more registrable than the generic
word "hotels," alone. The examining attorney has submitted an
entry from The American Heritage Dictionary of the English
Language (Fourth Edition 2000) defining ".com" as "ABBREVIATION:
commercial organization (in Internet addresses)." We also take
judicial notice of the following definition of "TLD" as "(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 (9th ed. 2001) (emphasis added).
The term ".COM," in itself, has no source-indicating
significance. Rather, it signifies that the user of the domain
name is a commercial entity, and that the goods or services
offered by the entity involve use of the Internet. See In re
Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370 (Fed. Cir.
2004).
Serial No. 78277681
13
Furthermore, there is nothing in the combination of HOTELS
and .COM that results in any new or incongruous meaning, or a
different commercial impression. While there is no bright-line
rule that appending a top-level domain name such as ".com" to an
otherwise generic term will never affect registrability (see
Oppedahl, supra), in this case it does not. Each of the terms
HOTELS and .COM has a clear and readily understood meaning and
the combined term communicates just as clearly and directly that
applicant operates a commercial website that provides its
customers with information about hotels. The Federal Circuit
has held that "the PTO has satisfied its evidentiary burden [on
genericness] if...it produces evidence including dictionary
definitions that the separate words joined to form a compound
have a meaning identical to the meaning common usage would
ascribe to those words as a compound." In re Gould Paper Corp.,
834 F.2d 1017, 5 USPQ2d 1110, 1111 (Fed. Cir. 1987).
The examining attorney has also made of record printouts of
Google search summaries, together with printouts from some
associated websites.7 It can be seen from the web pages and even
from the more abbreviated excerpts in the search summaries that
the term "hotel.com" or "hotels.com" is frequently used as part

7 Although some of the websites are referenced only in summary format,
we find that there is ample information in the summary to understand
the context of usage. Cf. In re Fitch IBCA Inc., 64 USPQ2d 1058, 1060
(TTAB 2002) ("probative value of search engine summary results...will
vary depending upon the facts of a particular case.").
Serial No. 78277681
14
of the domain names of others to denote websites that provide
hotel information and/or hotel reservation services, i.e., the
services provided by applicant's website. Examples of these
websites are shown below:
Hotels, travel, discount hotels - reservations and lodgings
Hotels and hotel reservations by All-Hotels, travel,
lodgings and discount hotels worldwide. Instant
reservations at 10000 hotels in 10000 locations. ...
All-Hotels is one of the largest online hotel reservation
companies - we have every kind of lodging...all over the
world! [Printed at bottom of web page.]
www.all-hotels.com

hotel reservations and bookings
...Web-Hotels.com - Travel and Hotel Reservations. Hotel
booking for all major worldwide cities and travel
destinations. ... [The web page also includes tabs to
search for "value rates" and "premiere hotels."]
www.web-hotels.com

My-Discount-hotels.com
...
My-discount-hotels.com is one of the most active online
discount hotel reservation websites. ... My-discount-
hotels.com is one of the most visited hotel information
sites on the internet.
www.my-discount-hotels.com
Hotel Reservation Site
Free - compare rates and prices for hotel reservation
sites. ...
www.123-hotels.com

Additional examples of such usage include
www.choicehotel.com ("...Book and Save now with Best Choice e-
rate Guarantee"); and www.dealsonhotels.com ("Find a Lower Rate,

Serial No. 78277681
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We'll Beat It! Low Internet Hotel Rates Guaranteed").8
It is clear from the website and promotional materials of
applicant as well as the websites of third-parties that
consumers who are interested in finding information about hotels
or making reservations at hotels, would immediately understand
that HOTELS.COM identifies a website that provides such
services. Cf. Reed Elsevier Properties Inc., supra at 1381
(affirming the Board's finding that LAWYERS.COM is generic for
online information exchange in the fields of law, legal news,
and legal services, the Court noted that third-party websites
are competent sources to determine what the relevant public
would understand LAWYERS.COM to mean and provide substantial
evidence to support the Board's decision). In addition, this
evidence demonstrates a competitive need for others to use as
part of their own domain names and trademarks, the term that
applicant is attempting to register.
HOTELS.COM is properly considered a compound word for
purposes of the genericness analysis rather than a phrase, as
the two terms appear without any space or separation between
them. See In re Gould, supra; and, e.g., In re

8 There are also a number of websites for hotel information or hotel
reservations that include the term "hotel" somewhere in the name,
including www.hotelstravel.com ("Containing over 75000 links to
hotels, discount hotels and travel-related services, the most
complete, comprehensive and up-to-date hotel directory on the
web...."); and www.hotelres.com ("Online hotel reservations,
discounted rates, best value rating system and objective hotel
information for hotels in San Francisco.").
Serial No. 78277681
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CyberFinancial.Net Inc., supra. Compare In re American
Fertility Society, 188 F.3d 1341, 51 USPQ2d 1832 (Fed. Cir.
1999). However, even if HOTELS.COM were viewed as a phrase,
under the analysis required by American Fertility, we would
still find it generic. The evidence showing use of domain names
incorporating "hotel.com" or "hotels.com" by others in the field
to refer to the same types of services as those defined in the
application reflects a clear understanding of the phrase
HOTELS.COM, as a whole, as it relates to the genus of
applicant's services. See Marvin Ginn, supra at 530. (the
"critical issue in genericness cases is whether members of the
relevant public primarily use or understand the term sought to
be protected to refer to the genus of goods or services in
question."). Compare American Fertility, supra at 1837 ("The
PTO here failed to provide any evidence that the phrase as a
whole, SOCIETY FOR REPRODUCTIVE MEDICINE, has acquired no
additional meaning to the relevant public than the terms
'society' and 'reproductive medicine' have individually.")
Furthermore, it can be seen from some of the above
excerpts, i.e., www.all-hotels.com, www.my-discount-hotels.com,
and www.123-hotels.com, that websites providing information
about hotels and reservations for hotels, are referred to as
"hotel information sites" and "hotel reservation sites." See
also, for example, www.hotres.com ("In contrast to other hotel
Serial No. 78277681
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reservation websites, you can complete an entire reservation
with HOTRES.com..."); and www.phi-phi.com ("Unlike many hotel
reservation websites, phi-phi.com only requires your credit card
details after you have received your Reservation Confirmation").
In addition, the website, www.travelscience.com, provides links
to other "hotel information and reservation sites" such as
hotelrooms.com ("This is one of the best hotel sites we have
found. They have a...terrific hotel search engine..."); and
hotelstravel.com ("This site has over 75,000 links to a
worldwide selection of hotels...."). Similarly, the website
www.travel-channel.us provides "Lodging and Hotel Information
Sites" and "Best Hotel Information Sites" ("Our websites offer
the information you need for planning the perfect family
vacations...").
It is clear from this evidence that "hotel information
site" or "hotel reservation site" identifies a particular type
of website. The genus of applicant's services, which is defined
as providing information about temporary lodging and making
reservations at temporary lodging, logically includes the type
of website known as a "hotel information site" or a "hotel
reservation site." Thus, HOTELS.COM is generic for an
additional reason. It not only identifies a central focus of
applicant's services, as discussed earlier, but it also
identifies at least one category of the services themselves,
Serial No. 78277681
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i.e., that applicant provides a hotel information website and a
hotel reservation website. "So long as [the mark] 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 re Eddie Z's Blinds and Drapery Inc.,
74 USPQ2d 1037, 1042 (TTAB 2005). It is also clear from this
evidence that domain names incorporating "hotel.com" or
"hotels.com" are used by others to identify such websites.
Consumers would see HOTELS.COM and they would immediately
recognize it as a term that denotes a hotel information website
and/or a hotel reservation website.
Applicant argues essentially that HOTELS.COM is not generic
because applicant is not providing a "hotel" service as it does
not provide lodging and meals for its users; and that based on
definitions for "agency"; "hotel"; "reservation" and "reserve"
from Random House Webster's College Thesaurus the term "hotel"
is not a synonym for any of those terms. (Response dated August
4, 2004 at 4.)
The Federal Circuit rejected a similar argument by the
applicant in Reed Elsevier Properties Inc., supra. In that
case, as noted earlier, LAWYERS.COM was found to be generic for
online information exchange in the fields of law, legal news,
and legal services. Although applicant argued that it was not
seeking to register its mark for selling lawyers or offering
Serial No. 78277681
19
services of lawyers, the Court found that the Board properly
concluded that "a central and inextricably intertwined element
of [the claimed] genus is information about lawyers and
information from lawyers." Reed Elsevier Properties Inc., supra
at 1380. Similarly, in the present case, "hotels" identifies
the central focus of the information and reservation services
provided on applicant's website, and thus the term HOTELS.COM,
consisting of nothing more than a term that names that central
focus of the services, is generic for the services themselves.
See also, for example, In re DNI Holdings Ltd., 77 USPQ2d 1435,
1441 (TTAB 2005) (SPORTSBETTING.COM generic for, inter alia,
provision of information regarding sports and betting, finding
that "the information piece of applicant's recited services is
inextricably tied into the actual betting."); and In re
CyberFinancial.Net Inc., supra (BONDS.COM generic for Internet
information services and electronic commerce services which are
directed, in part, to bonds, the products which comprise the
subject matter of applicant's services).
Further, as to this point, this panel noted in the prior
decision that In re Seats, Inc., 757 F.2d 274, 225 USPQ 364
(Fed. Cir. 1985) was distinguishable from the prior case; and we
again find it distinguishable from the present case. The Seats
case involved an application to register SEATS as a mark for
"ticket reservation and issuing services for various events by
Serial No. 78277681
20
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 reservations 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. However, as this
panel explained in the prior case:
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 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.

Hotels.com I at 31-32.
This case is also distinguishable from In re Dial-A-
Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807 (Fed.
Cir. 2001). In that case the Federal Circuit reversed the
Board's holding affirming the genericness refusal to register 1-
888-MATRESS as a mark for "telephone shop-at-home services in
Serial No. 78277681
21
the field of mattresses." We recognize that there are
similarities between a telephone number and a domain name in
that each typically can be used by only one entity at a time.
However, as explained in In re Martin Container, Inc., 65 USPQ2d
1058 (TTAB June 11, 2002) and In re CyberFinancial.Net, supra,
although telephone numbers are unique, i.e., a given ten-digit
number can be used by only one entity at a time, domain names
may be up to sixty-three numbers or characters (plus the
characters used to identify the TLD), so that many domain names
could contain the same root terms (such as "hotels.com"),
combining them with different numbers or letters as prefixes
and/or suffixes.
We find here, as in the prior case, that the examining
attorney has met her burden of establishing, prima facie, that
the primary meaning of HOTELS.COM is generic for the involved
services. In addition, we find that applicant's evidence does
not rebut this showing of genericness.
In support of applicant's contention that HOTELS.COM is not
generic, applicant has submitted printouts of a number of third-
party registrations for marks that include either the word
HOTEL(S) or the term .COM, and in a few instances, marks that
include both terms. Applicant argues that the USPTO has
permitted marks allegedly similar to applicant's mark to
register either on the Supplemental Register or on the Principal
Serial No. 78277681
22
Register, with or in some cases without a showing of acquired
distinctiveness.
For the most part, these marks are readily distinguishable
from the mark herein and they do not compel a finding that
applicant's mark is not generic. In any event, regardless of
what these third-party registrations may show, and even to the
extent the marks in these registrations "have some
characteristics similar" to the mark herein, as the Federal
Circuit has stated, "the PTO's allowance of such prior
registrations does not bind the Board or this court." In re
Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed.
Cir. 2001). It is well settled that each case must be decided
on its own facts, based on the particular mark, the particular
goods or services, and the particular record in each
application. Accordingly, there is "little persuasive value in
the registrations" applicant has submitted. Id. Nor do these
third-party registrations establish that there is an Office
practice holding such marks are generally registrable. See In
re First Draft, Inc., 76 USPQ2d 1183 (TTAB 2005).
Applicant also argues that applicant's evidence
demonstrates that HOTELS.COM is perceived as a non-generic brand
name by a large majority of the relevant class of purchasers for
applicant's services. To support this contention, applicant
made of record in this case, as it did in the prior case, 64
Serial No. 78277681
23
declarations, identifying the declarants as "Applicant's
customers, vendors, competitors and others in the field."
(Brief at 9.) Applicant maintains that this evidence shows both
acquired distinctiveness of HOTELS.COM and that the term is not
generic. This evidence was thoroughly considered and discussed
by this panel in the prior decision, and without repeating the
findings of the prior decision, we adopt them here. See,
generally, Hotels.com I Recon. Further, we adhere to this
panel's conclusion in the prior case that the declarations are
not entitled to significant probative value in determining how
the relevant public perceives the term "hotels.com." Id at 10.
We have also considered applicant's other evidence of
acquired distinctiveness in determining the relevant public's
perception of the mark. Applicant has submitted the declaration
of Elizabeth Hart, a (now former) paralegal of applicant's
counsel, introducing evidence of use of the essentially
equivalent HOTEL.COM mark since 1997. Applicant has also
submitted the declaration of Linda Essary, applicant's
compliance manager, attesting to applicant's substantial
revenues and advertising expenditures, and introducing examples
of print and other forms of advertisements and other evidence of
extensive public exposure of HOTELS.COM. However, evidence of
even significant promotion, use and sales cannot transform a
generic term into a trademark. See Roux Laboratories, Inc. v.
Serial No. 78277681
24
Clairol Inc., 427 F.2d 823, 166 USPQ 34, 39 (CCPA 1970) ("mere
advertising or other evidence of supposed secondary meaning
cannot convert something unregistrable by reason of its being
the common descriptive name or generic name for the goods - the
antithesis of a trademark - into a registrable mark"); and In re
Northland Aluminum Prods., Inc., 777 F.2d 1556, 227 USPQ 961,
964 (Fed. Cir. 1985) (BUNDT common descriptive name for type of
cake and evidence of de facto secondary meaning cannot change
that result). See also Hotels.com I at 32, 35.
Also attached to the Essary declaration is the online
market study mentioned earlier which was conducted on
applicant's hotels.com website. While the study may demonstrate
consumers' favorable view of the website, the services provided
on the website and various advertisements relating to the
website, the study does not, as applicant claims, evidence
consumer perception or recognition of HOTELS.COM as a mark.
We turn finally to applicant's survey. This was a national
probability double blind telephone survey conducted by Thomas D.
Dupont, Ph.D. using a "Teflon" format.9 The survey sample
consisted of 277 males and females age 18 and over who have
stayed at a hotel or motel in the past 12 months or plan to in

9 Applicant describes the survey as a "'Teflon' type" survey. This
refers to the format of the survey used in E.I. duPont De Nemours &
Co. v. Yoshida International, Inc., 393 F.Supp. 502, 185 USPQ 597
(E.D.N.Y. 1975) to prove that "Teflon" was not generic.
Serial No. 78277681
25
the next 12 months. (Survey report at 2 and 6.) The stated
objective of the survey was to determine whether consumers
perceive HOTELS.COM as a brand name or as a generic (common)
name for the services.
Respondents were first told the difference between a brand
name and a common name using three examples, as illustrated by
the following: "For a business that sells gasoline, SHELL would
be a brand name and SERVICE STATION would be a common name."
The respondents were then tested for their understanding of the
concepts by asking two additional questions, one of which was:
"For a business that sells HAIRCUTS, would you say BARBER SHOP
is a BRAND NAME or a COMMON NAME?" The 27 respondents who did
not answer both questions correctly were eliminated from the
survey.
The remaining 250 respondents were asked a series of
questions presented in a standard format and in "randomized
order" about the names of eight retail businesses, including
HOTELS.COM. The following are representative of the questions
presented:
For a business that sells FLOWERS, would you say FLORIST is
a BRAND NAME or a COMMON NAME?

For a business that makes HOTEL RESERVATIONS AND PROVIDES
INFORMATION ABOUT HOTELS, would you say HOTELS DOT COM is a
BRAND NAME or a COMMON NAME?

Serial No. 78277681
26
The results of the survey are displayed in "Table 1" below.

As can be seen in the table, 76% of the respondents
answered that HOTELS.COM is a brand name. While that figure
seems impressive on its face, we find that the survey is so
seriously flawed that the results cannot be given any weight.
To begin with, there was a critical omission in the
screening process and the result is that the universe for the
survey is fatally overbroad. Dr. Dupont screened for
respondents' understanding of the difference in concept between
a brand name and a generic name. However, the term involved in
this case also happens to be a domain name. Although we can
assume that consumers will recognize HOTELS.COM as a domain
name, we cannot assume that they understand the conceptual
Serial No. 78277681
27
difference between a domain name and a brand name, or even
recognize that there is a difference. Many consumers may
automatically equate a domain name with a brand name, believing
they both serve the same function. Thus, Dr. Dupont should have
ascertained through the screening process, rather than assumed,
that participants in the survey could distinguish the two
concepts; and those who could not make the distinction should
have been eliminated from the sample. As it stands, this
universe of respondents could have viewed any ".com" name,
regardless of the nature of the term preceding it as a so-called
brand name, thereby radically skewing the results of the survey
in applicant's favor.
At a minimum, the respondents should have been presented
with sample names that had some relevance to the mark in this
case. Except for the term AMAZON.COM, which involves a compound
term created by joining an arbitrary term and a TLD, the sample
names have no connection to the type of mark at issue.
Furthermore, the name AMAZON.COM is too obvious an example of a
".com" domain name that also functions as a brand name. The
survey should have tested for respondent understanding of
various types of compound terms using ".com," including
compounds utilizing a generic term and ".com." Then results
showing recognition of such terms as generic would have made the
76% who recognized HOTELS.COM as a brand name meaningful.
Serial No. 78277681
28
Finally, we note that the survey report states that the
questions were asked in randomized order. This was apparently
accomplished by a computer, but there is no indication of
whether or how frequently the HOTELS.COM mark was immediately
preceded by the well recognized example of a ".com" brand name,
AMAZON.COM. If HOTELS.COM was preceded in the line-up of
questions by this name, it could have led or misled respondents
into automatically assuming that they should consider HOTELS.COM
a brand name as well.
In light of the noted deficiencies in the survey, we find
that it is entitled to no probative weight as to public
perception of HOTELS.COM.
While we acknowledge, as applicant points out, that any
doubt on the question of genericness must resolved in favor of
publishing the mark for opposition, we disagree with applicant
that its evidence is sufficient to raise any such doubt about
the genericness of HOTELS.COM. For the reasons set forth in the
prior Board decisions, and for the additional reasons expressed
herein, we find that HOTELS.COM is generic, and that the record
in this case does not dictate a different result.
Acquired distinctiveness
Although we have determined that HOTELS.COM is generic, as
mentioned earlier, if applicant should ultimately prevail in any
appeal of this decision, we find in the alternative that the
Serial No. 78277681
29
evidence of acquired distinctiveness is sufficient to support
registration under Section 2(f).

Decision: The refusal to register under Section 2(e)(1) is
affirmed.

HOTEL-I.pdf

HOTEL-recon
.pdf