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 Internet 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.
Ultimately, as this Court discussed, the doctrine of acquired distinctiveness may be sufficient to support registration. However, a domain trademark must be deemed descriptive rather than generic and the use must be so predominant that users and consumers recognize the domain name as intellectual property of 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.