Trademarking Generic Domain Names Just Got Harder
Friday, July 24th, 2009
Court rules Hotels.com can’t be trademarked.
A federal appeals court has ruled against Hotels.com in its bid to trademark its name. The court ruled that “Hotels” is generic and descriptive of its business.
Here’s what it means for domain name owners:
1. Generic domain names are harder to trademark and thus harder to protect. For example, Candy.com would likely not be able to get a trademark. However, the use of a generic term not related to the principle product on the web site (e.g. Amazon.com) can still be trademarked.
2. It may be harder for Hotels.com and other generic domain owners to win under anti-cybersquatting and UDRP for typos, although UDRP panels are fairly liberal about assuming common law trademarks even when a federal government has rejected a trademark application.
3. Filing a trademark for one your domain names as a preemptive measure may become more difficult.
MediaPost points out that it would be easier for other companies to bid on Google Adwords for your domain name, too.
It’s important to stress that the problem here is that Hotels.com is all about hotels, meaning Hotels.com was merely descriptive. This doesn’t mean that other domain names can’t be trademarked.