Generic Domain Name Not Entitled to Trademark Registration or Protection

The United States Court of Appeals for the Federal Circuit recently ruled that hotels.com was not distinctive enough to qualify for a trademark registration with the United States Patent and Trademark Office.  The trademark decision, although it pertains to a domain name, is quite consistent with trademark law as a whole.  It is long standing precedent that the addition of a .com domain designation, or any top level domain for that matter, does not make a generic term registerable.  Instead, the mark as a whole must be distinctive enough to qualify for registration, and therefore protection.

 

While this decision may cause domainers to think twice about pursuing protection for their domain names, the effect of this decision is likely to make cybersquatting law the means for redress when domains such as this are involved.  For example, both the UDRP and the ACPA require that the person bringing the complaint have trademark rights in the domain.  As such, establishing trademark rights is a prerequisite to any cause of action under cybersquatting law.  Therefore,  if a domain has changed hands, common law conversion claims or related claims may be the only option.

 

Ultimately, as this Court discussed, the doctrine of acquired distinctiveness may be sufficient to support registration.  However, a mark must be deemed descriptive rather than generic and the use must be so predominant that users and consumers recognize the domain name as a brand rather than as a generic term.  Acquiring trademark rights in a domain name still remains important despite this decision.  As such, an experienced trademark and domain name attorney should be consulted when determining whether or not to file for trademark protection for a domain name.

Comments

[Stewart Engelman DNI Services]

Hello,

Your points are on target. Trademarks that specify single real dictionary words, or common phrases (like "time will tell") are not valid except to the extent of distinctive fonts in the company logo. Trademark registrants need to use common sense about what is in the public domain, and not rely on faulty USPTO decisions (these will not hold up in a court challenge).