"TM", yes; "®", no.
Blawgletter's heart swells each time a court rules in line with what we think of as common sense. Today we almost popped a ventricle.
The Federal Circuit provided the cause. It held that the Trademark Trial and Appeal Board — a branch of the U.S. Patent and Trademark Office — did not err in blocking registration of a trademark in "HOTELS.COM". The panel said:
The applicant argues that the sixty-four declarations and the extensive survey evidence [saying people see hotels.com as a "brand name" instead of a "common" or "generic" one] showed that HOTELS.COM is perceived by the relevant public "not as referring to a class or category of services recited in the Appellant's application, but, rather, as referring to a brand of such services originating from one and only one source — Appellant." Appellant Br. 16. However, on the entirety of the evidence before the TTAB, and with cognizance of the standard and burden of proof borne by the PTO, the TTAB could reasonably have given controlling weight to the large number of similar usages of "hotels" with a dot-com suffix, as well as the common meaning and dictionary definition of "hotels" and the standard usage of ".com" to show a commercial internet domain.
In re Hotels.com, L.P., No. 08-1429, slip op. at 10-11 (Fed. Cir. July 23, 2009).
