Hotels.com, L.P.

Trademark Trial and Appeal Board

Oct 24, 2006

No. 76414272re (T.T.A.B. Oct. 24, 2006)

Hearing: Mailed:
January 31, 2006 October 24, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Hotels.com, L.P.
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Serial No. 76414272
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On Request for Reconsideration
_______

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

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,
sought registration of a composite word and design mark
including the term HOTELS.COM in a stylized form of
lettering. The examining attorney required applicant to
include a disclaimer of "hotels.com," which the examining
attorney determined to be generic for the identified
services.
This Opinion is Not
Citable as Precedent of
the TTAB
Ser No. 76414272
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On appeal, the Board upheld the disclaimer
requirement, agreeing that the term is generic. Applicant
now seeks reconsideration of that decision. Specifically,
applicant argues that even if the examining attorney is
viewed as having established a prima facie case of
genericness, a point that applicant does not concede but
assumes for the purpose of its request for reconsideration,
applicant provided direct evidence that more than 60
declarants from among the relevant public do not view the
term HOTELS.COM as a generic term. Applicant contends the
Board either did not consider this evidence or did not
accord this evidence proper weight. "To the extent the
Board found this evidence to be merely evidence of de facto
secondary meaning, or merely evidence of an association of
the generic term with Applicant, the Board's decision is
believed to be erroneous." Req. for Recon., p. 4.
Accordingly, applicant contends that our decision requires
correction.
The direct evidence on which applicant relies as
support for its request for reconsideration consists of 64
declarations submitted as attachments to a declaration of
Gregory S. Porter, general counsel and secretary of
applicant. The Porter declaration introduces the attached
declarations with the following statement:
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9. As a result of the extensive use and
advertising of the HOTELS.COM mark in connection
with Hotels.com, L.P.'s online services, the mark
has come to be widely recognized by the public
and industry as denoting Hotels.com, L.P.'s
services. Attached hereto as Exhibit D are 64
declarations from customers, competitors, and
vendors of Hotels.com, L.P., and other persons
familiar with the online services provided by
Hotels.com, L.P. under the HOTELS.COM mark.

Because of the introductory phrase in the above quoted
paragraph, "[a]s a result of the extensive use and
advertising of the HOTELS.COM mark," we construe this
paragraph as referring back to the information provided on
use and advertising in paragraphs 3-8 of the Porter
declaration. These paragraphs in the declaration pertain
to applicant’s claim of acquired distinctiveness.
Before further discussing the declaration evidence and
applicant's request for reconsideration, it will be helpful
to review some of the procedural history of the application
and appeal, so as to view the evidence in context. When
the declarations were filed, applicant was maintaining the
alternative positions that "hotels.com" is inherently
distinctive, and that even if the term is not inherently
distinctive, it has acquired distinctiveness. In its
response to the first office action, applicant contended
that "hotels.com" is inherently distinctive because no two
entities can have the same internet domain name. Applicant
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also argued that the term has, at least, acquired
distinctiveness. The Porter declaration and the 64
declarations submitted therewith were included with
applicant's response to the second office action, and were
stated by applicant to constitute "evidence of 'secondary
meaning.'" Response of December 19, 2003, p. 2.
In contrast to these responses to office actions,
applicant did not pursue on appeal the argument that
"hotels.com" is inherently distinctive. Applicant conceded
in both its main brief and reply brief that the term is
descriptive, but argued that the term is not generic and
has acquired distinctiveness. We did not construe the
Porter declaration and the declarations attached thereto as
evidence that the declarants recognize the term
"hotels.com" as inherently source indicating both because
they were offered as evidence of secondary meaning and
because the appeal did not present a claim of inherent
distinctiveness. As recognized by applicant, however, we
did consider the declarations as evidence of acquired
distinctiveness.
In its request for reconsideration, applicant does not
argue that the declarations should have been considered as
evidence of inherent distinctiveness. However, applicant
does argue that the declarations are not merely evidence of
Ser No. 76414272
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de facto distinctiveness of a generic term, and should have
been considered in the first instance as significant
evidence of the "non-genericness" of "hotels.com."
We note that applicant, in the section of its main
appeal brief wherein it argued that "hotels.com" is not
generic, did not reference the declarations as support for
this contention; rather, applicant expressly relied on the
declarations only in that section of its main brief wherein
it asserted that the term "hotels.com" has acquired
distinctiveness. We find applicant’s argument, raised for
the first time in a request for reconsideration, that the
declaration evidence should be considered as evidence on
"non-genericness" to be inappropriate. However, to the
extent that we did not expressly address these declarations
as pertaining to the issue of "non-genericness" in our
decision, we do so now.
A review of the declarations reveals that they are
essentially form declarations. An index of the
declarations lists 18 of them as "business declarations"
and the remaining 46 as "consumer declarations." Each of
the declarations sets forth not the declarant's own words,
but a set of statements that vary very little. The first
statement in each of the businessperson declarations states
that the declarant is "engaged in and thoroughly acquainted
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with the business of hotel reservations, transportation and
travel agency services,"1 while the first statement in each
of the consumer declarations states only that the declarant
is "acquainted with the hotel reservation, transportation
and travel agency industry as a consumer." Each business
declarant, save two, then states, "to me personally, and
among those persons involved in the hotel reservation,
transportation and travel agency industry, the term
HOTELS.COM is not the common, generic name of any product,
service, or field of study."2 Each consumer declarant
states, "to me personally, the term HOTELS.COM is not the
common, generic name of any product, service, or field of
study." Clearly, the second statement in each of the 64
declarations is the same, except that the business
declarants purport to speak not only for themselves but
also as to the understanding of others involved in the
industry. By the remaining statements in each of the 64
declarations, each declarant states that the term

1 One of the 18 business declarations does not use the words
"engaged in" but does use the words "thoroughly acquainted with."
Another (exh. D-6) does not use the language quoted above, but
instead recites the name of the declarant, his employer and what
he does on the job for his employer.

2 One business declarant substitutes "persons thoroughly
acquainted with in [sic]" for the words "persons involved in."
The other business declarant (exh. D-6) that does not use the
exact phrase quoted above speaks only for himself, not for others
in the industry.
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"hotels.com" is a mark and serves as an indication of
source.
Applicant's current argument that the declarations are
evidence of "non-genericness" makes a very fine
distinction, and there is no evidence that the declarants
were intending, by signing what are clearly form
declarations, to make such a fine point. There is no
indication that the declarants are familiar with the
distinctions between inherently distinctive marks and terms
that have acquired distinctiveness, or between a generic
term and a descriptive term. See In re Pennzoil Products
Co., 20 USPQ2d 1753, 1759 (TTAB 1991) (form declarations
found to "lack persuasiveness on the issue of the primary
significance of the term 'MULTI-VIS' to the purchasing
public" when there was no indication that the declarants
were "familiar with such technical concepts as mere
descriptiveness, distinctiveness and the definition of a
trademark.").
Each declaration bears a caption showing its relevance
to the involved application and includes "Attorney Docket
No. 2488.5." The statements that "hotels.com" is not
generic, is a mark, and serves to indicate source are
conclusory only. There are no explanations why the
declarants believe these statements to be true. Further,
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the caption to each declaration lists "MARK: HOTELS.COM &
DESIGN." Thus, even if an individual asked to complete a
declaration form had not reached an independent conclusion
as to whether "hotels.com" was a mark or a generic term,
the caption would suggest the answer. Form declarations
that may not "actually reflect the views of the declarants"
are entitled to "little weight." In re EBSCO Industries
Inc., 41 USPQ2d 1913, 1916 (TTAB 1996).
The relevant public for determining genericness in
this case is the general public, i.e., anyone who might
need information about hotel rooms, or need to reserve a
hotel room. Such a relevant public would include both
business and leisure travelers, and the declarations
submitted by applicant are asserted to be from both of
these subclasses of the relevant public.3 The Porter
declaration, however, explains that some of the
businessperson declarations are from "customers" and
"vendors" of applicant. Such businessperson declarants,
being familiar with applicant, would not necessarily be
reflective of the average business traveler not conditioned
to associate "hotels.com" with applicant. See EBSCO
Industries, supra (the only evidentiary value of

3 Tim Schmuckal, corporate counsel for Expedia, Inc., submitted
declarations both as a businessperson and as a consumer.
Ser No. 76414272
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declarations from declarants familiar with the applicant
goes to the issue of acquired distinctiveness).
Finally, we note that 34 of the 64 declarations,
including a majority of the consumer declarations, are from
individuals employed by Interval Travel, Interval
International Limited, or Interval International, Inc.
(Interval declarants). Since 7 of the 34 Interval
declarants are classified among the businessperson
declarants that may already be familiar with applicant, we
find it difficult to consider any real distinction between
those 7 and the other 27 Interval "consumer" declarants.
In other words, all 34 of these declarants may be
particularly familiar with applicant and its use of
"hotels.com." Similarly, there are also declarants from
Collins & Scanlon LLP and from Expedia, Inc. listed in both
the business and consumer lists of declarants. Thus, these
declarants, too, may be particularly familiar with
applicant.
Under these circumstances, we do not consider these
declarants representative of the average member of the
relevant public, be it a business traveler or a leisure
traveler.
In conclusion, we do not find any error in our initial
consideration of the evidence of these declarants, or in
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our decision not to accord the declarations significant
probative value in determining how the relevant public
perceives the term "hotels.com." The request for
reconsideration is denied.